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.: IPR2020-01386
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`U.S. Patent No. 7,237,634 K2
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`___________________
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`PETITIONERS’ REPLY TO PATENT OWNERS’ RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT & BMW
`OF NORTH AMERICA, LLC,
`Petitioners
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
`
`
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`
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`Inter Partes Review No.: IPR2020-01386
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`U.S. Patent No. 7,237,634 K2
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`___________________
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`PETITIONERS’ REPLY TO PATENT OWNERS’ RESPONSE
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`Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
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`Table of Contents
`
`I.
`II.
`
`Page
`Introduction ...................................................................................................... 1
`The Nii-Based Grounds (1, 4-9) ...................................................................... 2
`A. Varying Severinsky’s Setpoint Based on Nii’s Pattern
`Information ............................................................................................ 3
`PO’s Other Motivation Arguments Are Ill-Premised Upon
`Bodily Incorporation of References ...................................................... 5
`Severinsky Discloses “vary[ing] said setpoint” ................................... 9
`C.
`III. The Quigley-Based Grounds (2, 4-9) ............................................................ 13
`IV. The Graf-Based Grounds (3, 4-9) .................................................................. 22
`V.
`The Ma-Based Grounds (7, 10-14) ................................................................ 25
`VI. Conclusion ..................................................................................................... 30
`Certification of Word Count .................................................................................... 32
`Certificate of Service ............................................................................................... 33
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`B.
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`i
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`Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
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`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”)
`International Application Publication No. WO 92/15778 (“Ma”)
`BMW1021
`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
`
`ii
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`Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
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`
`Exhibit No. Description of Exhibit
`BMW1024 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
`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
`
`iii
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`Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
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`
`Exhibit No. Description of Exhibit
`BMW1034 Leschly, K.O., Hybrid Vehicle Potential Assessment, Volume 7:
`Hybrid Vehicle Review, U.S. Department of Energy (Sep. 30, 1979)
`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
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`iv
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`Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
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`
`Exhibit No. Description of Exhibit
`BMW1047 Heisler, H., Advanced Engine Technology, Chapters 6.7-6.10
`(1995), 315-47
`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)
`
`v
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`Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
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`
`Exhibit No. Description of Exhibit
`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
`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)
`
`vi
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`Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
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`BMW1083
`
`
`Exhibit No. Description of Exhibit
`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
`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”)
`
`vii
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`Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
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`
`Exhibit No. Description of Exhibit
`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”)
`
`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”)
`
`viii
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`U.S. Patent No. 7,237,634
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`Exhibit No. Description of Exhibit
`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”)
`
`
`
`
`ix
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`I.
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
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`Introduction
`While PO asserted all of the claims challenged here (seen in the chart below)
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`against Petitioners in the parallel district court litigation, its PO Response tellingly
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`attempts to defend only a handful of limitations, appearing in claims 33, 49, 105,
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`and 188.1
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`
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`PO’s Response and Dr. Shahbakhti’s (“Shahbakhti”) declaration, however,
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`only serve to underscore that those limitations likewise do not render the claims
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`patentable. Both rely on irrelevant “bodily incorporation” arguments (contrary to
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`1 The “crossed-out” claims were cancelled in previous IPRs and claims in “red”
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`recycle features from other previously cancelled claims. (Pet., 14-16.) PO’s
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`tangled-web claiming strategy apparently even confounded itself, as it first asserted
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`against BMW, then disclaimed, the “all red” claims 242 and 268. (See ID, 2.)
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`1
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
`KSR) and straw-men combinations that Petitioners never proposed. And, PO’s
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`Response once again seeks to relitigate issues decided by the Board and the
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`Federal Circuit, this time regarding Severinsky’s road load based “setpoint.” All in
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`an effort to lead the Board away from just how broadly the patented features are
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`claimed in order to obscure well-known, common sense motivations to combine
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`the prior art with Severinsky’s setpoint-based control strategy—such as optimizing
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`the setpoint-based control strategy for better hybrid vehicle efficiency and
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`improved battery life by using the known pattern information.2
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`II. The Nii-Based Grounds (1, 4-9)
`PO does not dispute that Nii discloses “monitoring a driver’s repeated
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`driving operations over time.” (POR, 28-29.) Instead, PO essentially asks the
`
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`2 Petitioners encourage the Board to view Shahbakhti’s video depositions, which
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`Petitioners intend to request permission to submit as BMW1101 and BMW1106,
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`as Shahbakhti was unable to answer even straight-forward questions without
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`repeatedly taking lengthy delays to first search if something was written for him on
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`the point in his declaration (as reflected in the transcript time-stamps). (E.g.,
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`BMW1089, 22:4-19; 31:15-21; 98:12-23; 101:24-102:18; 105:6-12; 114:15-115:5;
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`131:5-13; 135:18-136:8; 137:8-138:23; 140:24-141:9; 145:15-25; BMW1105,
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`21:2-12; 47:4-48:8.)
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`2
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
`Board to believe that a POSA—having knowledge of a vehicle’s actual pattern of
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`operation from Nii—would not have been motivated to use that knowledge to
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`adjust the setpoints at which the vehicle switches between its operating modes.
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`Common sense, and the long history of hybrid development demonstrating a
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`continual desire to improve vehicle efficiency, dictate otherwise. (BMW1089
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`(Shahbakhti), 74:13-75:5, 77:9-18, 130:11-131:21 (“efficiency is always one of the
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`variables that is very important”); BMW1103 (Shahbakhti), 13:18-24, 14:22-23.)
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`A. Varying Severinsky’s Setpoint Based on Nii’s Pattern Information
`Nii teaches the same monitoring of repeated driving operations over time as
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`the ’634 Patent: a daily commute. (BMW1022, 2:21-24, 5:59-64; BMW1001,
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`40:50-41:3.) Regardless of PO’s irrelevant bodily incorporation arguments (Nii’s
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`series architecture or its use of time-averaged values, discussed in the next
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`section), a POSA would have been motivated to incorporate that pattern-related
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`information into Severinsky’s control scheme, and reasonably expected to succeed.
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`(Pet., 20-23; BMW1008, ¶¶276-83.)
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`First, combining Nii and Severinsky would further enhance the efficiency of
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`Severinsky’s vehicle during normal driving and during hysteresis. (ID, 31-32;
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`BMW1013, 18:23-42; BMW1008, ¶¶276-83.) Indeed, knowing precisely how a
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`vehicle will actually be operated is the “holy grail” for fine-tuning hybrid vehicle
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`efficiency. (BMW1088, ¶36.)
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`3
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`U.S. Patent No. 7,237,634
`Second, a POSA would have known that Severinsky’s factory-defined
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`parameters could be further refined to increase efficiency. (BMW1088, ¶¶34-36.)
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`Severinsky discloses a preselected setpoint of 60% MTO, even though its engine
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`operates efficiently “between about 50[-]90%” MTO. (BMW1013, 8:27-30.)
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`Severinsky’s hysteresis lowers that setpoint to be outside the engine’s most
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`efficient operating range for an arbitrary period of time. (BMW1008, ¶279.) A
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`POSA would have understood that these predefined parameters could be improved
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`based on the vehicle’s actual usage, such as by using Nii’s pattern information,
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`thereby enhancing the vehicle’s efficiency. (BMW1008, ¶¶280-82; BMW1088,
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`¶¶34-36; BMW1089, 80:3-81:16 (Shahbakhti admitting “predictability” and
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`knowledge of a route can “provide useful information for…improving…vehicle
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`performance”).)
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`Third, a POSA would have understood how to implement Nii’s pattern-
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`monitoring functionality into Severinsky’s controller logic, which would simply
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`involve using the actual-usage pattern information (e.g., of a daily commute) to
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`define the setpoint, rather than Severinsky’s factory-set parameter3. (BMW1008,
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`3 Claim 33 only requires a single setpoint. The recited “varying [of] the SP
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`accordingly” can thus be met by simply using a different SP at the start of a trip
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`(e.g., using 65% vs. 60%) when a known pattern is expected.
`
`4
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`U.S. Patent No. 7,237,634
`¶283.) The ’634 Patent confirms this was “within the skill of the art.” (BMW1001,
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`40:50-41:3; BMW1088, ¶71.)
`
`B.
`
`PO’s Other Motivation Arguments Are Ill-Premised Upon Bodily
`Incorporation of References
`PO argues Severinsky and Nii “have fundamentally different architectures”
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`and “Nii is focused on determining an average output value.” (POR, 13-14, 32.)
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`But Petitioners’ combination does not rely on a physical substitution of elements
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`from Nii into Severinsky. Petitioners rely on Nii for “monitoring a driver’s
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`repeated driving operations over time” to vary the “setpoint” in Severinsky’s
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`control strategy. (Pet. 19-23; ID, 35-36; BMW1008, ¶¶276-83; BMW1088, ¶¶34-
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`37.) Because PO’s arguments would “require an actual, physical substitution of
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`elements” from one reference into another, they are irrelevant. In re Mouttet, 686
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`F.3d 1322, 1332 (Fed. Cir. 2012); (ID, 35).
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`They are also without merit. Both series and parallel hybrid architectures are
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`concerned with enhancing hybrid vehicle efficiency based on alterations to the
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`control scheme. (BMW1008, ¶283; BMW1089, 130:11-131:21, 138:24-140:21
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`(Shahbakhti).) Both share primary considerations, such as controlling battery state
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`of charge (“SOC”) or determining when to employ the engine. (BMW1088, ¶¶38-
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`44.) And, both have different modes of operation in which engine load is adjusted
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`based upon driver demand and battery SOC, among other variables. (Id.;
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`BMW1089, 66:24-67:17 (Shahbakhti admitting battery SOC “is one of the
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`5
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
`important variables” in both); 66:24-67:17, 68:7-71:19 (other overlapping
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`considerations and control strategies).) These similarities are demonstrated by Nii,
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`by other prior art, and in omitted portions of Ehsani 2005 (PAICE2020).4
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`(BMW1088, ¶¶38-44.) Indeed, Shahbakhti has previously opined that a POSA
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`would be motivated to combine parallel (Kira) and series (Kumar) hybrid drive
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`systems simply because “both disclose propulsion systems for powering a hybrid
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`vehicle,” and other general reasons. (BMW1098, ¶74; see BMW1099;
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`BMW1100.) His counter-testimony in this IPR is merely opportunistic.
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`PO is also incorrect that Nii’s engine output “remains unchanged” regardless
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`of fluctuations “in the vehicle’s instantaneous torque demand.” (POR, 32.) Nii
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`explains that the engine load (generator output) is dependent on the instantaneous
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`load requirements, which influence power consumption. (BMW1088, ¶¶45-49;
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`BMW1022, 1:44-53; BMW1105, 111:6-21 (Shahbakhti: “POSITA will know that
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`4 Ehsani 2005 is one of several references cited by Shahbakhti post-dating the ’634
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`Patent’s priority date by several years (see Paper 21), underscoring his lack of
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`relevant, contemporaneous experience. (BMW1089, 13:6-19 (admitting no
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`industry experience in 1998, and obtaining bachelor’s degree in 2000).) His
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`opinions should be given little, if any, weight. Sundance, Inc. v. DeMonte
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`Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008).
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`6
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
`if the driving conditions are changing, those will affect…the torque or the power”
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`needed and “how much energy, either fuel or…battery is used”).) Nii further
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`teaches turning the engine off at high battery SOC and varying the engine control
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`based on other techniques. (BMW1088, ¶50; BMW1105 116:9-119:13 (Shahbakhti
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`admitting average power consumption and battery SOC are both used to change
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`engine output).)
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`PO next argues that average power consumption “does not provide any
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`information about the instantaneous torque requirement.” (POR, 35-41.) But
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`Petitioners do not propose using average power consumption to turn Severinsky’s
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`engine on or off, but rather to vary Severinsky’s “setpoint” at which the engine is
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`operated. (BMW1088, ¶¶51-52.) Thus, if the “instantaneous torque requirement”
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`were “very high,” the controller would not “turn off the engine when it is needed
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`the most.” (Contra POR, 40.) Instead, if instantaneous torque were above the
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`setpoint, the engine would be turned on because it would continue to respond to
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`driver demand all while adjusting its setpoints to improve engine efficiency.
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`(BMW1088, ¶¶53-54.) Thus, Nii’s recognition of vehicle travel patterns or average
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`power requirements could each be used to adjust Severinsky’s setpoint for turning
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`off the engine during hysteresis sooner or at a higher percentage of engine MTO
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`7
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
`and corresponding speed (e.g., 25-28 mph), thus increasing vehicle fuel economy.
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`(Id.)5
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`Furthermore, “the average power requirement of a typical drive cycle”
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`would provide “useful information” for modifying Severinsky’s setpoint (contra
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`POR, 37), as recognized both in the ’634 Patent and Nii, and as demonstrated by
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`Shahbakhti’s own exhibits. (BMW1088, ¶¶55-70; BMW1105, 130:9-131:2
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`(Shahbakhti admitting Nii uses average power requirements for “running the
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`engine efficiently” and “maintaining the battery within those SOC range”);
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`BMW1001, 41:14-29 (recognizing pattern of operation based upon average torque
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`requirement “fluctuat[ing]” near 30% MTO); PAICE2020, Fig. 7.10
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`5 Contrary to PO’s argument (POR, 39 n.15), Nii discloses using the average power
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`of both an entire trip and parts thereof. (BMW1088, ¶¶66-67.)
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`8
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
`(demonstrating high instantaneous torque demand over time yields high average
`
`torque demand).)6
`
`C.
`Severinsky Discloses “vary[ing] said setpoint”
`Severinsky’s engine normally operates above 60% MTO (the “setpoint”),
`
`but will also operate “outside its most fuel efficient operating range, on occasion.”
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`(BMW1013, 18:23-25; ID, 34-35.) For example, when employing hysteresis in its
`
`mode switching, Severinsky will “vary said setpoint” by lowering it below 60%
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`MTO (corresponding to 30-35 mph in “highway mode”) to avoid nuisance engine
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`starts. (Pet. 21-22; BMW1088, ¶¶9-10; ID, 32; see also BMW1013, 18:25-33
`
`(“varying said setpoint” to avoid discharging the batteries excessively).)
`
`
`6 PO cites Guzzella 2007 (POR, 36-37) to argue that average power requirements
`
`would not have been “well[-]suited” to “complex propulsion systems” existing in
`
`2007 (nearly a decade after the relevant time). (BMW1088, ¶¶62-64.) But
`
`Shahbakhti conceded he was not aware any document predating the ’634 Patent
`
`containing a similar disclosure. (BMW1105, 138:15-25, 142:15-143:15.) In fact,
`
`omitted portions from contemporaneous evidence he submitted in IPR2020-01299
`
`show that a “pattern” can be represented by an average value. (BMW1008, ¶¶62-
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`64 (citing BMW1104, 338).) So do omitted portions of Guzzella 2007 itself.
`
`(BMW1088, ¶¶62-64 (citing BMW1108, 211, 219, 220).)
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`9
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
`PO responds that Severinsky’s hysteresis is only speed-based while the
`
`claimed “setpoint” is “a torque value.” (POR, 21-24 (PO’s emphasis).) This
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`argument is wrong for several reasons.
`
`First, it is a red herring. Severinsky’s control system does not take only
`
`speed into account—the Board debunked that argument years ago (BMW1059, 14-
`
`17)—but must also take torque into account. (BMW1088, ¶¶8-26.) A vehicle
`
`control system, like Severinsky’s, must always respond to operator commands,
`
`even during hysteresis, and an operator’s road load request and speed are its
`
`primary inputs. (Id.; BMW1013, 6:19-26, 17:11-15 (“the load imposed” is
`
`monitored “at all times”); BMW1089, 55:15-57:24, 61:4-63:18 (Shahbakhti
`
`admitting controller would take driver commands into account); BMW1105,
`
`76:22-79:12 (admitting “road load” and “a driver request” are each an “important
`
`factor”).) For example, in Severinsky’s hill-climbing mode, speed may be low—
`
`e.g., under the highway mode’s 30-35 mph—but load may be above the
`
`corresponding 60% MTO setpoint, requiring both engine and motor operation.
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`(BMW1088, ¶¶12-17; BMW1013, 18:36-38.) To address operator demands, a
`
`POSA would understand that Severinsky’s control system could not employ
`
`hysteresis based on speed alone; it must still consider a higher-requested road-load
`
`demand. (BMW1088, ¶¶8-26; BMW1089, 30:21-36:19 (Shahbakhti admitting
`
`speed alone is not enough to estimate instantaneous torque).) PO’s argument would
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`10
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
`have Severinsky ignore the user’s road-load demands during the 2-3 minutes of
`
`highway-driving hysteresis, an absurd result.
`
`Moreover, Severinsky’s speed-based thresholds correlate to torque-based
`
`thresholds, and vice versa, just as in the ’634 Patent. (BMW1088, ¶¶9-10;
`
`BMW1059, 14-17; BMW1013, 7:8-16 (“engine is operated only under the most
`
`efficient conditions of output power and speed”); Fig. 14 (illustrating engine’s
`
`MTO in relation to speed); BMW1001, 17:45-50 (speaking of “speed” when
`
`describing operating modes).) Severinsky’s so-called “speed-based” hysteresis is
`
`somewhat of a misnomer; it may be based on speed, but is also based on other
`
`considerations, including torque. (BMW1088, ¶¶8-26; e.g., BMW1089, 34:18-
`
`35:12, 36:20-37:20, 39:2-18 (Shahbakhti admitting a POSA knew which
`
`parameters to use to vary a setpoint).) PO’s concession that Severinsky uses “two
`
`separate speed thresholds” for turning off the engine during hysteresis is thus a
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`fatal admission, (POR, 21,) since those “speed thresholds” are also torque
`
`thresholds by their very nature.
`
`Second, how the setpoint is varied in Severinsky is irrelevant. While PO
`
`asserts that Severinsky’s normal 30-35 mph/60% MTO threshold is “written into
`
`source code and would not change” (POR, 21-22,) the challenged claims are
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`agnostic as to how “varying said setpoint” is accomplished. (BMW1088, ¶¶27-29.)
`
`They do not preclude switching between two (or more) values that represent the
`
`11
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
`“setpoint” at any given time, as in Severinsky’s hysteresis. (Id.) Indeed, Shahbakhti
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`admitted this is the “main example” in the ’634 Patent of how “varying said
`
`setpoint” can be accomplished. (Id.; BMW1001, 41:4-47 (describing varying the
`
`setpoint between one lower and a second higher setpoint); BMW1105, 29:14-30:17
`
`(Shahbakhti: “this is an example of showing claim 33 for monitoring and adjusting
`
`the setpoints”); 30:18-32:6 (calling it the “main example”).) PO cannot credibly
`
`argue a difference here.
`
`Nor does Severinsky’s hysteresis simply “disregard” the “setpoint.” (POR,
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`23-25.) Severinsky’s “setpoint” is normally 60% MTO (corresponding to
`
`approximately 30-35 mph), but during hysteresis, the engine is allowed to operate
`
`at a lower percentage of MTO (a lower setpoint), corresponding to approximately
`
`20-25 mph. (BMW1088, ¶30; BMW1013, 18:34-42.) Critically, if the vehicle
`
`drops below the lower setpoint, the engine will be shut off. (BMW1088, ¶30.) The
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`original setpoint is thus not disregarded but replaced—i.e., “varied”—by a lower
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`setpoint, just as it is in the ’634 Patent. (Id.; BMW1001, 41:4-47.)
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`Third, PO is precluded from relitigating issues the Board previously decided.
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`Papst Licensing v. Samsung Elecs. Am., 924 F.3d 1243, 1250-51 (Fed. Cir. 2019);
`
`(ID, 34-35). Contrary to PO’s account (POR, 23-24,) the Board rejected that
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`Severinsky uses speed as “the sole factor…in determining when to employ the
`
`engine,” which is identical to PO’s arguments here. (BMW1059, 14 (emphasis in
`
`12
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`
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
`original).) Then, as now, PO downplays Severinsky’s “teaching as a whole,” which
`
`discloses “elsewhere that efficient operation of the engine is based on torque, not
`
`speed,” and that speed is not “the sole factor used…in determining when to employ
`
`the engine.” (BMW1059, 14-17.) PO cannot dispute these findings now.
`
`Finally, the Board’s prior findings also contradict Shahbakhti’s assertion that
`
`Severinsky’s hysteresis would require “separate” “speed-based” and “torque-based
`
`algorithm[s]” that “operate in parallel” with, and do not impact, one another.
`
`(POR, 22.) The Board already found that both speed and torque play a role in
`
`Severinsky’s (and the ’634 Patent’s) torque-based control strategy. (BMW1059,
`
`14-17.)7
`
`III. The Quigley-Based Grounds (2, 4-9)
`Claim 33 recites a setpoint-based hybrid vehicle control strategy (elements
`
`[33a]-[33d]), in which a single “setpoint” recited in the claim may be adjusted—
`
`i.e., “varied”—based on monitoring patterns of vehicle operation over time (per
`
`[33e]). Nothing in the claim’s broad language, nor the ’634 Patent’s specification,
`
`
`7 Shahbakhti’s opinions appear based on his refusal to accept the Board’s finding
`
`that Severinsky’s 30-35 mph highway mode threshold corresponds to a torque
`
`value. (ID, 34; BMW1105, 63:20-64:11, 74:11-75:18 (Shahbakhti: “they will be
`
`two different things”).)
`
`13
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-01386
`U.S. Patent No. 7,237,634
`requires that setpoint to be “varied” within the course of a single drive (journey or
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`trip). To the contrary, the “patterns of vehicle operation over time” can be
`
`monitored over
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