UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioners
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
`
`
`
`
`
`
`
`
`
`
`
`Inter Partes Review No.: IPR2020-01386
`
`U.S. Patent No. 7,237,634 K2
`
`___________________
`
`
`REPLY DECLARATION OF DR. GREGORY W. DAVIS
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 1 of 94
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioners
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
`
`
`
`
`
`
`
`
`
`
`
`Inter Partes Review No.: IPR2020-01386
`
`U.S. Patent No. 7,237,634 K2
`
`___________________
`
`
`REPLY DECLARATION OF DR. GREGORY W. DAVIS
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 1 of 94
`
`
`
`
`
`
`
`
`
`
`
`I.
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`
`
`
`
`Table of Contents
`Qualifications of one of Ordinary Skill in the Art ................................... 11
`The “Monitoring” and “Varying” Limitations of Claim 33 and Its
`Dependent Claims Would Have Been Obvious in View of the Nii-Based
`Combinations (Grounds 1, 4-9) ................................................................ 11
`A.
`Severinsky Discloses “vary[ing] said setpoint” ............................ 11
`B.
`A Skilled Artisan Would Have Been Motivated to Vary
`Severinsky’s Setpoint Based on Nii’s Pattern Information and Would
`Have Had a Reasonable Expectation of Success in Doing So ................. 27
`The “Monitoring” and “Varying” Limitations of Claim 33 and Its
`Dependent Claims Would Have Been Obvious in View of the Quigley-
`Based Combinations (Grounds 2, 4-9) ..................................................... 52
`The “Monitoring” and “Varying” Limitations of Claim 33 and Its
`Dependent Claims Would Have Been Obvious in View of the Graf-Based
`Combinations (Grounds 3, 4-9) ................................................................ 69
`The Ma-Based Grounds Render Obvious the “Turbocharger” Limitations
`of Claims 45, 105, and 188 and Their Dependent Challenged Claims
`(Grounds 7, 10-14) ................................................................................... 71
`Conclusion ................................................................................................ 94
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 2 of 94
`
`
`
`LIST OF EXHIBITS
`
`
`Exhibit No. Description of Exhibit
`BMW1001 U.S. Patent No. 7,237,634, including Inter Partes Review
`Certificates issued as U.S. Patent No. 7,237,634 K1 and U.S. Patent
`No. 7,237,634 K2
`BMW1002 USPTO Assignments on the Web for U.S. Patent No. 7,237,634 K2
`BMW1003-
`Reserved
`BMW1007
`
`BMW1008 Declaration of Dr. Gregory W. Davis in Support of Inter Partes
`Review of U.S. Patent No. 7,237,634 K2
`BMW1009 Curriculum Vitae of Dr. Gregory W. Davis
`BMW1010 Reserved
`BMW1011 Ford Motor Co. v. Paice LLC, IPR2014-00884, Paper 38, Final
`Written Decision (P.T.A.B. Dec. 10, 2015)
`BMW1012 File History for U.S. Patent No. 7,104,347 K2
`BMW1013 U.S. Patent No. 5,343,970 (“Severinsky” or “Severinsky ’970”)
`Reserved
`BMW1014-
`BMW1019
`BMW1020 U.S. Patent No. 6,188,945 (“Graf”)
`BMW1021
`International Application Publication No. WO 92/15778 (“Ma”)
`BMW1022 U.S. Patent No. 5,650,931 (“Nii”)
`Innovations in Design: 1993 Ford Hybrid Electric Vehicle
`BMW1023
`Challenge, Society of Automotive Engineers, SAE/SP-94/980,
`Davis, G.W. et al., “United States Naval Academy, AMPhibian”
`(Feb. 1994), 277-87
`BMW1024 1996 Future Car Challenge, Society of Automotive Engineers,
`SAE/SP-97/1234, Swan, J. et al., “Design and Development of
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 3 of 94
`
`
`
`
`
`Exhibit No. Description of Exhibit
`Hyades, a Parallel Hybrid Vehicle for the 1996 FutureCar
`Challenge” (Feb. 1997), 23-30
`
`BMW1025 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 U.S. Provisional Appl. No. 60/100,095 (Filed Sep. 11, 1998)
`BMW1027 Wakefield, E.H., Ph.D., History of the Electric Automobile – Hybrid
`Electric Vehicles, Society of Automotive Engineers, SAE/SP-
`98/3420 (1998), 17-34 (Chapter 2: The History of the Petro-Electric
`Vehicle)
`BMW1028 Unnewehr, L.E. et al., “Hybrid Vehicle for Fuel Economy,” Society
`of Automotive Engineers, SAE/SP-76/0121 (1976)
`BMW1029 Burke, A.F., “Hybrid/Electric Vehicle Design Options and
`Evaluations,” Society of Automotive Engineers, SAE/SP-92/0447,
`International Congress & Exposition, Detroit, Michigan (Feb. 24-28,
`1992)
`BMW1030 Duoba, M, “Challenges for the Vehicle Tester in Characterizing
`Hybrid Electric Vehicles,” 7th CRC On Road Vehicle Emissions
`Workshop, San Diego, California (Apr. 9-11, 1997)
`BMW1031 Electric and Hybrid Vehicles Program, 18th Annual Report to
`Congress for Fiscal Year 1994, U.S. Department of Energy (Apr.
`1995)
`BMW1032 Bates, B. et al., “Technology for Electric and Hybrid Vehicles,”
`Society of Automotive Engineers, SAE/SP-98/1331 (Feb. 1998)
`BMW1033 Stodolsky, F. et al., “Strategies in Electric and Hybrid Vehicle
`Design,” Society of Automotive Engineers, SAE/SP-96/1156, Kozo,
`Y. et al., “Development of New Hybrid System – Dual System,”
`SAE/SP-96/0231 (Feb. 1996), 25-33
`BMW1034 Leschly, K.O., Hybrid Vehicle Potential Assessment, Volume 7:
`Hybrid Vehicle Review, U.S. Department of Energy (Sep. 30, 1979)
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 4 of 94
`
`
`
`Exhibit No. Description of Exhibit
`BMW1035 Reserved
`BMW1036 Masding, P.W., et al., “A microprocessor controlled gearbox for use
`in electric and hybrid-electric vehicles,” Transactions of the Institute
`of Measurement and Control, Vol. 10, No. 4 (July –Sep. 1988), 177-
`86
`BMW1037 Reserved
`BMW1038 U.S. Patent No. 6,209,672 (“Severinsky ’672”)
`BMW1039 Davis, G.W., Ph.D. et al., Introduction to Automotive Powertrains,
`Chapter 2: Road Loads (2000), 27-68
`BMW1040 Ehsani, M. et al., “Propulsion System Design of Electric Vehicles,”
`Texas A&M University, Department of Electrical Engineering
`(1996), 7-13
`BMW1041 Ehsani, M. et al., “Propulsion System Design of Electric and Hybrid
`Vehicles,” IEEE Transactions on Industrial Electronics, Vol. 44,
`No. 1 (Feb. 1997), 19-27
`BMW1042 Bauer, H., ed., Automotive Handbook, Robert Bosch Gmbh (4th Ed.
`Oct. 1996), Excerpts
`BMW1043 Design Innovations in Electric and Hybrid Electric Vehicles,
`Society of Automotive Engineers, SAE/SP-96/1089, Anderson, C.,
`et al, “The Effects of APU Characteristics on the Design of Hybrid
`Control Strategies for Hybrid Electric Vehicles,” SAE/SP-95/0493
`(Feb. 1995), 65-71
`BMW1044 U.S. Patent No. 5,656,921 (“Farrall”)
`BMW1045 Stone, R., Introduction to Internal Combustion Engines, Chapter 9:
`Turbocharging (2nd Ed. 1995), 324-53
`BMW1046 Bauer, H., ed., Automotive Handbook, Robert Bosch Gmbh (4th Ed.
`Oct. 1996), Excerpts
`BMW1047 Heisler, H., Advanced Engine Technology, Chapters 6.7-6.10
`(1995), 315-47
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 5 of 94
`
`
`
`Exhibit No. Description of Exhibit
`Reserved
`
`BMW1048-
`BMW1050
`BMW1051 U.S. Patent No. 5,823,280 (“Lateur”)
`Reserved
`BMW1052-
`BMW1053
`BMW1054 Quigley, et al., “Predicting the Use of a Hybrid Electric Vehicle
`(“Quigley”)
`BMW1055 Declaration of Sylvia Hall-Ellis, Ph.D.
`BMW1056 U.S. Patent No. 5,189,621 (“Onari”)
`BMW1057 U.S. Patent No. 4,625,697 (“Hosaka”)
`BMW1058 U.S. Patent No. 5,533,583 (“Adler”)
`BMW1059 Ford Motor Co. v. Paice LLC, IPR2014-01416, Paper 26, Final
`Written Decision (P.T.A.B. Mar. 10, 2016)
`BMW1060 Ford Motor Co. v. Paice LLC, IPR2015-00722, Paper 13, Institution
`Decision (P.T.A.B. Oct. 26, 2015)
`BMW1061 Ford Motor Co. v. Paice LLC, IPR2015-00787, Paper 12, Institution
`Decision (P.T.A.B. Oct. 26, 2015)
`BMW1062 Ford Motor Co. v. Paice LLC, IPR2015-00791, Paper 12, Institution
`Decision (P.T.A.B. Oct. 27, 2015)
`BMW1063 Ford Motor Co. v. Paice LLC, IPR2014-00904, Paper 41, Final
`Written Decision (P.T.A.B. Dec. 10, 2015)
`BMW1064 Ford Motor Co. v. Paice LLC, IPR2015-00758, Paper 28, Final
`Written Decision (P.T.A.B. Nov. 8, 2016)
`BMW1065 Ford Motor Co. v. Paice LLC, IPR2015-00785, Paper 31, Final
`Written Decision (P.T.A.B. Oct. 21, 2016)
`BMW1066 Ford Motor Co. v. Paice LLC, IPR2015-00801, Paper 28, Final
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 6 of 94
`
`
`
`Exhibit No. Description of Exhibit
`Written Decision (P.T.A.B. Oct. 21, 2016)
`BMW1067 Ford Motor Co. v. Paice LLC, IPR2015-00606, Paper 33, Final
`Written Decision (P.T.A.B. Nov. 8, 2016)
`BMW1068 U.S. Patent No. 5,842,534 (“Frank”)
`BMW1069 Vittone, Oreste, “Fiat Conceptual Approach to Hybrid Cars Design,”
`12th International Electric Vehicle Symposium, Volume 2 (1994)
`BMW1070 U.S. Patent No. 5,865,263 (“Yamaguchi”)
`BMW1071 U.S. Patent No. 5,623,104 (“Suga”)
`BMW1072 Paice LLC v. Ford Motor Co., Appeal Nos. 2017-1387, 2017-1388,
`2017-1390, 2017-1457, 2017-1458, Doc. 70-2, Opinion (Fed. Cir.
`Feb. 1, 2018)
`BMW1073 Paice LLC v. Ford Motor Co., Appeal Nos. 2016-1746, 2016-2034
`Doc. 57-2, Opinion (Fed. Cir. Apr. 21, 2017)
`BMW1074 An, F. and Barth, M., “Critical Issues in Quantifying Hybrid Electric
`Vehicle Emissions and Fuel Consumption,” Society of Automotive
`Engineers, SAE/SP-98/1902 (Aug. 1998)
`BMW1075 Heywood, J.B., Internal Combustion Engine Fundamentals,
`(McGraw-Hill 1998).
`BMW1076 Pulkrabek, W.W., Engineering Fundamentals of the Internal
`Combustion Engine, Excerpts (Prentice Hall 1997)
`BMW1077 Hawley, G.G., The Condensed Chemical Dictionary, Excerpts (9th
`Ed. 1977)
`BMW1078 Brown, T.L. and LeMay, H.E., Jr., Chemistry: The Central Science,
`Chapter 3: Stoichiometry (3rd Ed. 1985)
`BMW1079 Engh, G.T. and Wallman, S, “Development of the Volvo Lambda-
`Sond System,” SAE/SP-77/0295 (1978)
`BMW1080 Stefanopoulou, A.G., et al., “Engine Air-Fuel Ratio and Torque
`Control Using Secondary Throttles,” Proceedings of the 33rd
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 7 of 94
`
`
`
`BMW1083
`
`Exhibit No. Description of Exhibit
`Conference on Decision and Control (Dec. 1994)
`BMW1081 Takaoka, T., et al.., “A High-Expansion-Ratio Gasoline Engine for
`the TOYOTA Hybrid System,” Toyota Technical Review, Vol. 47,
`No. 2 (Apr. 1998), 53-61
`BMW1082 Palm III, W.J., Control Systems Engineering, Excerpts (John Wiley
`& Sons 1986)
`Jurgen, R.K., Ed., Automotive Electronics Handbook, Excerpts
`(McGraw Hill 1995)
`BMW1084 U.S. Patent No. 5,479,898 (“Cullen”)
`BMW1085 Kruse, R.E. and Huls, T.A., “Development of the Federal Urban
`Driving Schedule,” Automobile Engineering Meeting, SAE/SP-
`73/0552 (1973)
`BMW1086 Paice LLC et al. v. BMW AG et al., No. 1:19-cv-003348-SAG,
`Order (D. Md. Nov. 25, 2020)
`BMW1087 Declaration of Jacob Z. Zambrzycki in Support of Motion for Pro
`Hac Vice Admission Under 37 C.F.R. § 42.10
`BMW1088 Reply Declaration of Dr. Gregory W. Davis in Support of Inter
`Partes Review of U.S. Patent No. 7,237,634 K2
`BMW1089 Deposition Transcript of Dr. Mahdi Shahbakhti (May 6, 2021) – for
`IPR2020-00994
`BMW1090 European Patent No. EP 0,576,703 (“Graf ’703”)
`BMW1091 Kalberlah, A., “Electric Hybrid Drive Systems for Passenger Cars
`and Taxis,” Society of Automotive Engineers, SAE/SP-91/0247,
`International Congress and Exposition, Detroit, Michigan (Feb. 25-
`Mar. 1, 1991) (“SAE Paper 910247”)
`BMW1092 Ehsani, M., et al., Modern Electric, Hybrid Electric, and Fuel Cell
`Vehicles: Fundamentals, Theory, and Design (CRC Press 2005),
`Chapter 8 (“Parallel Hybrid Electric Drive Train Design”) (“Ehsani
`2005”)
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 8 of 94
`
`
`
`Exhibit No. Description of Exhibit
`
`BMW1093-
`BMW1097 Reserved
`BMW1098 Declaration of Mahdi Shahbakhti, Ph.D. Regarding U.S. Patent No.
`7,723,932 in Case IPR2019-00011
`BMW1099 U.S. Patent Application Publication No. 2004/0069548 (“Kira”)
`(Exhibit 1005 in Case IPR2019-00011)
`BMW1100 U.S. Patent Application Publication No. 2003/0150352 (“Kumar”)
`(Exhibit 1006 in Case IPR2019-00011)
`BMW1101 Videotape of May 6, 2021 Deposition of Dr. Mahdi Shahbakhti,
`which is available from Petitioners upon request
`BMW1102 Reserved
`BMW1103 Deposition Transcript of Dr. Mahdi Shahbakhti (June 17, 2021) –
`for IPR2020-01299
`BMW1104 Excerpts from “Handbook of Air Pollution from Internal
`Combustion Engines” (Additional excerpts from the reference
`attached as Patent Owner Exhibit 2032 in IPR2020-01299)
`BMW1105 Deposition Transcript of Dr. Mahdi Shahbakhti (July 15, 2021) – for
`IPR2020-01386
`BMW1106 Videotape of July 15, 2021 Deposition of Dr. Mahdi Shahbakhti,
`which is available from Petitioners upon request
`BMW1107 Ehsani, M., et al., Modern Electric, Hybrid Electric, and Fuel Cell
`Vehicles: Fundamentals, Theory, and Design (CRC Press 2005),
`Preface and Chapter 1 (“Environmental Impact and History of
`Modern Transportation”) (“Ehsani 2005”)
`BMW1108 Guzzella, L. and Sciarretta, A., Vehicle Propulsion Systems:
`Introduction to Modeling and Optimization, Second Edition
`(Springer Berlin Heidelberg 2007), Chapter 7 (“Supervisory Control
`Algorithms”) (“Guzzella 2007”)
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 9 of 94
`
`
`
`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 (“Petitioners”) in the
`
`matter of Inter Partes Review of U.S. Patent No. 7,237,634 (“the ’634 Patent”) to
`
`Severinsky et al., IPR2020-01386.
`
`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.
`
`I previously submitted a declaration in support of Petitioners’ Petition
`
`for Inter Partes Review of the ’634 Patent, dated July 29, 2020 (BMW1008 (“First
`
`Declaration”)), which I hereby incorporate by reference.
`
`4.
`
`In preparation of this declaration and in forming the opinions
`
`expressed below, I have considered:
`
`(1) The documents referenced in my First Declaration and the
`
`documents referenced herein, including the Institution Decision (Paper 13)
`
`and the Patent Owners’ Response (Paper 20);
`
`(2) The Declaration of Mahdi Shahbakhti, Ph.D. in Support of the
`
`Patent Owner’s Response (Exhibit 2016) and the exhibits cited therein;
`
`(3) The relevant legal standards, including the standard for
`
`obviousness provided in KSR International Co. v. Teleflex, Inc., 550 U.S.
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 10 of 94
`
`
`
`398 (2007) as explained to me by counsel, and any additional documents
`
`cited in the body of this declaration; and
`
`(4) My knowledge and experience based upon my work and study
`
`in this area as described below.
`
`5.
`
`I now submit this Reply declaration in support of Petitioners’ Petition
`
`to address certain arguments raised by Patent Owners and/or their expert, Mahdi
`
`Shahbakhti, Ph.D. (“Dr. Shahbakhti”), in connection with Patent Owners’
`
`Response to the Petition, and certain issues identified by the Board.
`
`I.
`
`Qualifications of one of Ordinary Skill in the Art
`6.
`I have set forth my opinion regarding the level of skill possessed by a
`
`person of ordinary skill in the art of the ’634 Patent in my First Declaration.
`
`(BMW1008 at ¶¶ 44-47.) I have also reviewed the level of ordinary skill proposed
`
`by Dr. Shahbakhti. (Ex. 2016 (“Shahbakhti Decl.”) at ¶ 28.) I do not believe that
`
`the differences between Dr. Shahbakhti’s proposed level of skill and the one I have
`
`proposed are significant, and they in any event do not affect the opinions I have set
`
`forth below.
`
`II. The “Monitoring” and “Varying” Limitations of Claim 33 and Its
`Dependent Claims Would Have Been Obvious in View of the Nii-Based
`Combinations (Grounds 1, 4-9)
`A.
`Severinsky Discloses “vary[ing] said setpoint”
`7.
`Dr. Shahbakhti disputes my opinion that Severinsky discloses
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 11 of 94
`
`
`
`“vary[ing] said setpoint” on the basis that the threshold for determining when to
`
`turn off the engine during hysteresis is only “speed-based” whereas the claimed
`
`“setpoint” for determining when to turn off the engine when hysteresis is not
`
`employed is “torque-based.” (Shahbakhti Decl. at ¶¶ 63-73.)
`
`8.
`
`I disagree with Dr. Shahbakhti’s attempts to divorce speed from
`
`torque in this manner, and his suggestion that the relationship between torque and
`
`speed in Severinsky is limited to their merely being “not mutually exclusive”
`
`concepts. (Shahbakhti Decl. at ¶ 67.) To the contrary, they are integral inputs that
`
`must always be considered together by Severinsky’s hybrid vehicle control
`
`strategy.
`
`9.
`
`For example, as I explained in my First Declaration, in Severinsky’s
`
`“highway mode” the vehicle operates the “engine running constantly” after the
`
`“vehicle reaches a speed of 30-35 mph.” (BMW1008 at ¶ 461.) Despite this
`
`reference to a “speed of 30-35 mph,” Severinsky’s “highway mode” nevertheless
`
`corresponds to the limitation in claim 33 of “operating an internal combustion
`
`engine of the hybrid vehicle to propel the hybrid vehicle when the RL required to
`
`do so is between the SP and a maximum torque output (MTO) of the engine,
`
`wherein the engine is operable to efficiently produce torque above the SP, and
`
`wherein the SP is substantially less than the MTO,” as I showed in my First
`
`Declaration. (BMW1008 at ¶¶ 253-64; Severinsky (BMW1013) at 18:36-38; ’634
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 12 of 94
`
`
`
`Patent (BMW1001) at 60:65-61:3.) The corresponding torque-based “setpoint” at
`
`which the engine is normally turned on in the highway mode is at 60% of the
`
`engine’s MTO. (BMW1008 at ¶¶ 254-56.) In other words, the speed-based
`
`thresholds in Severinsky correlate to torque-based thresholds, and vice versa,
`
`which is also true in the ’634 Patent, whose vehicle operation is disclosed to
`
`function “as in the [Severinsky] ’970 patent.” (See Severinsky (BMW1013) at 7:8-
`
`16 (the “internal combustion engine is operated only under the most efficient
`
`conditions of output power and speed”) (emphasis added); Fig. 14 (illustrating
`
`engine’s MTO in relation to speed); see also ’634 Patent (BMW1001) at 12:42-61;
`
`18:48-55; 20:61-21:2; 36:5-43.)
`
`10. The same is true of Severinsky’s hysteresis mode, in which the
`
`vehicle “will continue to run the engine unless the engine speed is reduced to 20-
`
`25 mph for a period of time, typically 2-3 minutes,” which is outside the speed
`
`range of Severinsky’s highway mode. (BMW1008 at ¶ 279; Severinsky
`
`(BMW1013) at 18:36–40.) Just as the 30-35 mph speed threshold of the highway
`
`mode correlates to the 60% engine MTO that constitutes the claimed “setpoint” in
`
`Severinsky so, too, the lower 20-25 mph correlates to a lower level engine
`
`percentage of MTO. Thus, especially given that speed plays a role in the road load
`
`responsive control strategy of the ’634 Patent, too, it is my opinion that Severinsky
`
`discloses “varying said setpoint” at least during the time period when the vehicle
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 13 of 94
`
`
`
`operates in the hysteresis mode.
`
`11.
`
`I also disagree with Dr. Shahbakhti’s assertion that Severinsky’s
`
`hysteresis would require “two control algorithms that operate in parallel: a speed-
`
`based algorithm where the vehicle speed is the control variable and a torque-based
`
`algorithm where the road load is the control variable” that the controller must
`
`“arbitrate between.” (Shahbakhti Decl. at ¶ 64.) As I already explained, Severinsky
`
`discloses the claimed “setpoint” notwithstanding Severinsky’s “highway mode”
`
`describing turning on the engine in terms of both a 30-35 mph and a 60% MTO
`
`threshold. And yet there is no need for a controller to “arbitrate” between separate
`
`“speed-based” and “torque-based” algorithms to determine whether “highway
`
`mode” should be engaged or disengaged, further contradicting Dr. Shahbakhti’s
`
`opinion.
`
`12.
`
`Indeed, Severinsky’s so-called “speed-based hysteresis” must take
`
`torque into account. As I have explained, during hysteresis Severinsky’s controller
`
`lowers the engine setpoint to allow the engine to stay on at lower speed conditions
`
`than the minimum 30-35 mph (and correlated 60% MTO) required in “highway
`
`mode.” (BMW1008 at ¶ 461.) However, the control system must still take into
`
`account higher requested road load demand such as is encountered during Dr.
`
`Shahbakhti’s example of a vehicle climbing a hill (see Shahbakhti Decl. at ¶ 70),
`
`or in other instances, while still minimizing nuisance engine starts. Otherwise, the
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 14 of 94
`
`
`
`controller would not properly respond to the instantaneous road load requirements
`
`of the vehicle. A skilled artisan would have understood that the vehicle control
`
`must always respond to the operator commands, and that the road load request of
`
`the operator and the speed are primary inputs required by a control system such as
`
`Severinsky’s. (See, e.g., Severinsky (BMW1013) at 6:19-48, 17:11-15 (“the load
`
`imposed by the vehicle’s propulsion requirements” is monitored “at all times”).)
`
`13. Other, secondary parameters can also be taken into account, but the
`
`road load request of the operator is paramount. Thus, under traction, most control
`
`systems use the accelerator pedal request as an indication of the desired road load
`
`torque or power. This is the primary input. As I have previously described, the
`
`requested torque and power are directly related by the speed: Power = Torque *
`
`speed.
`
`14. Using the road load driver request as the primary control variable, and
`
`the relationship between road load power and torque (and speed) were both widely
`
`known by artisans. For example, Bumby II discloses that to implement its control
`
`scheme, the “algorithm converts the instantaneous power and speed requirement
`
`into a torque and speed demand”:
`
`Consequently, a suboptimal control policy can be defined, which
`defines an engine operating box as shown in Fig. 16. This box region
`is defined by an upper and lower torque bound and an upper and
`lower speed bound, the values of which are dependent on the
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 15 of 94
`
`
`
`
`
`particular hybrid philosophy. Within this box, engine-only operation
`is favoured while, when the operating point is outside this box, the
`selected mode of operation depends on the actual torque and speed
`values. Below the lower torque bound and the lower speed bound, all-
`electric operation is favoured. This eliminates inefficient use of the
`engine. Above the upper torque bound, true hybrid operation is used
`with the electric motor supplying the excess torque above the
`maximum available from the engine. To implement this control, the
`suboptimal control algorithm converts the instantaneous power
`and speed requirement into a torque and speed demand, at the
`torque split point for each available gear ratio. If one of this family of
`operating points falls within the engine operating box, then that gear
`and IC engine operation is selected. If more than one set of conditions
`define an operating point within the box, then the box is shrunk
`towards the engine maximum efficiency point, and that gear ratio
`which produces an operating point within this new region is selected.
`This ensures maximum engine efficiency. For all-electric operation,
`the gear ratio that puts the operating point nearest the motor break
`speed is selected to maximise conversion efficiency of the electrical
`system. In the hybrid mode, when the torque/speed point is in region
`C, the highest gear (lowest gear ratio) is selected to maximise engine
`efficiency.
`
`(Bumby II (BMW1015) at 11 (emphasis added); Fig. 16.)
`15. This is confirmed by SAE paper 910247 (BMW1091), cited on the
`
`face of both Severinsky and the ’634 Patent. This reference teaches the idea of a
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 16 of 94
`
`
`
`hysteresis which is based upon the accelerator pedal position which is used to keep
`
`the IC engine running unless a low load condition has been met for a period of
`
`time. This hysteresis is similar to that described by Severinsky where the control
`
`system monitors the driver input to ensure that the driver’s demand is met by the
`
`vehicle, even during a hysteresis condition:
`
`If the traffic situation requires less performance when driving with the
`IC-engine, the accelerator pedal should be lifted. If the accelerator
`pedal is fully released and no further action occurs for longer
`than 0.5 s. i.e. no renewed acceleration and no operation of the
`transmission selector lever, the IC-engine switches off and the
`vehicle now runs on without power. When the accelerator pedal is
`depressed again, the electric motor takes over the driving. If the
`electric motor’s 5 kW drive power is not sufficient, because the driver
`wishes to go faster or accelerate, he should “give more gas”, i.e.
`increase the accelerator-pedal travel beyond a certain point. The IC-
`engine is re-started so that the vehicle can drive on under the power of
`the IC-engine.
`
`It is also possible to drive with either the electric motor alone or with
`the IC-engine alone.
`
`(SAE Paper 910247 (BMW1091) at 9 (emphasis added).)
`
`16. This is further confirmed by a reference (Ex. 2020 (“Ehsani 2005”))
`
`that Dr. Shahbakhti cites for the proposition that the “grading resistance is
`
`independent of vehicle speed.” (Shahbakhti Decl. at ¶ 69 (citing Ehsani 2005 (Ex.
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 17 of 94
`
`
`
`2020) at 27).) As an initial matter, I note that Ehsani 2005 is dated 2005, many
`
`years after the earliest priority date of the ’634 Patent, and therefore I question its
`
`relevance here. In any event, I note that even this reference confirms that, despite
`
`being separate variables, both vehicle speed and desired torque must be taken into
`
`account by a vehicle controller, as can be seen in its Figure 8.2:
`
`
`(Ehsani 2005 (Ex. 2020) at 93 (annotated).) This is expressly described in the
`
`immediately following portion of Ehsani 2005, which Dr. Shahbakhti omitted from
`
`his exhibit:
`
`The overall control scheme of the parallel hybrid drive train is
`schematically shown in Figure 8.2. It consists of a vehicle controller,
`engine controller, electric motor controller, and mechanical brake
`controller. The vehicle controller is in the highest position. It collects
`data from the driver and all the components, such as desired torque,
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 18 of 94
`
`
`
`
`
`vehicle speed, PPS SOC [battery state of charge], engine speed and
`throttle position, electric motor speed, etc. Based on these data,
`component characteristics, and preset control strategy, the vehicle
`controller gives its control signals to each component controller/local
`controller. Each local controller controls the operation of the
`corresponding component to meet the requirements of the drive train.
`
`The vehicle controller plays a central role in the operation of the drive
`train. The vehicle controller should fulfill various operation modes-
`according to the drive condition and the data collected from
`components and the driver’s command-and should give the correct
`control command to each component controller. Hence, the preset
`control strategy is the key to the optimum success of the operation of
`the drive train.
`
`(Ehsani 2005 (BMW1092) at 261-62 (emphasis added).)
`
`17. Speed and required torque are therefore inputs that are always
`
`evaluated together, as disclosed by Severinsky’s hill-climbing mode, where speed
`
`may be low—e.g., under the 30-35 mph of the highway mode—but the load is well
`
`above the corresponding 60% engine MTO setpoint, requiring operation of both
`
`the engine and the motor. (Severinsky (BMW1013) at 18:30-32, 18:36-38.) That is
`
`because, as I have previously described, the requested torque and the power
`
`necessary to achieve it are directly related by the speed: Power = Torque * Speed;
`
`in other words, power is a function of both requested torque and speed.
`
`
`
`18. Ehsani 2005 again confirms this, as it provides a description of its
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 19 of 94
`
`
`
`control system operation in which various operating modes are based upon power
`
`demand. However, the actual setpoints can be adjusted in response to changes in
`
`vehicle speed and/or battery state of charge (“SOC”):
`
`
`
`(Ehsani 2005 (BMW1092) at 262 (annotated).)
`
`19. Figure 8.3 above illustrates how the control system will respond to
`
`examples of different operating conditions when operating in the Max. SOC-of-
`
`PPS (Max. battery state of charge) control strategy. First, at low vehicle speeds
`
`(below the vehicle speed Veb), the mode is set to “Motor-alone propelling mode”
`
`and the engine is not used (“engine is shutdown or idling”). The Figure also
`
`provides examples of other operating conditions (points A, B, C, and D) and how
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 20 of 94
`
`
`
`the control system will respond. A person of ordinary skill in the art would have
`
`recognized that each of these power demand points directly corresponds to a torque
`
`demand point (since torque = power / rotating speed). For example, point A is
`
`described as a demand power or torque which is greater than what the engine can
`
`optimally produce. Under the Max. SOC-of-PPS control strategy, the control
`
`system will use the “hybrid propelling mode” in which the engine is turned on and
`
`is set at its optimum operating line (curve 3) and the excess demand is met using
`
`the electric motor. As is shown, the optimum engine power (torque) setpoint (curve
`
`3), varies as a function of speed. Again, though, the control decision is based upon
`
`the demand torque or power.
`
`20. The same Figure also demonstrates the control operation using
`
`demand point B, which is less than the optimum power (torque) setpoint curve of
`
`the engine (curve 3). If the battery state of charge (PPS SOC) is below its
`
`maximum, the control will switch into PPS Charge mode where the engine will be
`
`operated at its optimum power (torque) value (curve 3) and the excess power will
`
`be used to charge the battery. However, if the battery state of charge is at its
`
`maximum so that it can’t be charged, the controller will change to Engine-alone
`
`propelling mode. Here the engine setpoint is lowered to allow the engine to operate
`
`with lower efficiency at part load (curve 4) to propel the vehicle without the aid of
`
`the electric drive. Thus, Dr. Shahbakhti’s own reference teaches that speed is
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 21 of 94
`
`
`
`relevant to varying a torque-based setpoint. (Ehsani 2005 (BMW1092) at 262-
`
`264.)
`
`21.
`
`Indeed, as shown in Figure 8.4 Ehsani 2005, which provides a
`
`flowchart of the Max. SOC-of-PPS control strategy, the “Traction power
`
`command, Ptc” provided by the operator’s use of the accelerator pedal or brake
`
`pedal is one of the primary inputs to the control system:
`
`
`(Ehsani 2005 (BMW1092) at 265 (annotated).)
`
`
`
`22. As can be seen from the Figure, if the vehicle is travelling at a speed
`
`below the Ver threshold, the Electric-alone traction mode (“Motor-alone propelling
`
`mode”) is selected. The engine setpoint, Pe-opt, is adjusted as a function of vehicle
`
`speed represented by curve 3 of Figure 8.2 and used to determine whether the
`
`
`
`
`
`BMW v. Paice, IPR2020-01386
`BMW 1088
`Page 22 of 94
`
`
`
`system operates in Hybrid traction mode (“Hybrid propelling mode”). If the
`
`traction power command, Pt (“Ptc”) is greater than the engine setpoint, Pe-opt, then
`
`Hybrid traction mode is used.
`
`23.
`
`I note that the control system described in Ehsani 2005 shares many
`
`features with that of Severinsky. For example, both systems describe the use of
`
`setpoints to determine when to operate the engine, and both describe different
`
`modes of operation including motor-only, engine-only and hybrid modes.
`
`24. Thus, I disagree with Dr. Shahbakhti’s opinion that a controller would
`
`need to somehow arbitrate between separate “speed-based” and “torque-based”
`
`thresholds and algorithms, and that a person of ordinary skill in the art would not
`
`have known how to do so. To the contrary, a person of ordinary skill in the art
`
`would readily understand how to implement the control scheme described in
`
`Severinsky, including varying the “setpoint” during hysteresis.
`
`25. For example, once the driver demand RL is greater than the 60% of
`
`engine MTO setpoint (e.g. at typical speeds of 30-35 mph), the control selects the
`
`“highway mode” of operation where the engine alone propels the vehicle. To
`
`accomplish Severinsky’s hysteresis, a skilled artisan would have understood that
`
`the control would simply change the SP to a lower value when in highway mode to
`
`keep the engine running (e.g., to a l
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
