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’ SUR-REPLY
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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’ SUR-REPLY
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`Attorney Docket: 36351-0018IP1
`Case IPR2020-01386
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`TABLE OF CONTENTS
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`B.
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`C.
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`A. Ground 1 – Severinsky in View of Nii Does Not Render Claim 33
`Obvious ................................................................................................. 1
`1. The prior art does not teach or suggest “varying said setpoint
`accordingly” ................................................................................ 2
`2. BMW’s reasons to combine are flawed .................................... 10
`Ground 2 – Severinsky in View of Quigley Does Not Render Claim
`33 Obvious .......................................................................................... 16
`Ground 3 – Severinsky in View of Graf Does Not Render Claim 33
`Obvious ............................................................................................... 21
`1. Severinsky in view of Graf does not teach or suggest “varying
`said setpoint accordingly” ......................................................... 21
`2. Severinsky in view of Graf does not teach or suggest
`“monitoring patterns of vehicle operation over time” .............. 21
`D. Grounds 4-9 ......................................................................................... 23
`E.
`Grounds 7, 10, and 11 – Severinsky in View of Ma Does Not Render
`Claims 49, 105, and 188 Obvious ....................................................... 23
`Grounds 12-14 ..................................................................................... 28
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`F.
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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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`PAICE 2035
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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”)
`June 16, 2021 Deposition Transcript of Dr. Gregory Davis in
`IPR2020-00994
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`I.
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`Introduction
`BMW’s reply confirms that all challenged claims of the ’634 patent are
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`patentable. Despite BMW’s repeated attempts to backfill its deficient Petition,
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`significant gaps remain in the prior art. BMW’s reply continues to beat the same
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`drum about “bodily incorporation.” But obviousness is BMW’s burden, and
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`BMW’s incorrect, oversimplified, and unexplained reasons to combine fail to
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`explain how and why a POSA would combine its proposed references.
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`II. BMW’s Grounds Fail To Demonstrate Obviousness
`A. Ground 1 – Severinsky in View of Nii Does Not Render Claim 33
`Obvious
`Claim 33 specifically requires “varying said setpoint”—a parameter the
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`hybrid controller uses for selecting operating modes—based on “monitoring
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`patterns of vehicle operation over time.” BMW cannot show that either Severinky
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`or Nii vary anything resembling a “setpoint” or even contemplate how the
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`controller could vary such a control parameter based on monitored vehicle patterns
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`over time. Severinsky does not vary any alleged “setpoint,” and Nii is concerned
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`with setting the engine at a constant output for battery charging.
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`In lieu of evidence, BMW offers sweeping statements about how pattern
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`information is good for enhancing vehicle efficiency. But the claims are not so
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`broad, and BMW cannot satisfy its burden by disregarding key claim elements.
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`1.
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`The prior art does not teach or suggest “varying said
`setpoint accordingly”
`Neither Severinsky nor Nii discloses a hybrid controller that varies the
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`“setpoint,” and BMW cannot fill this gap with unsupported expert testimony.
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`BMW does not dispute that Nii fails to disclose a “setpoint” and that Nii’s
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`teachings are unrelated to selecting between electric motor and engine propulsion
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`modes. Moreover, common sense and record evidence belie BMW’s assertion that
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`Seversinky discloses varying the claimed setpoint.
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`First, BMW again incorrectly argues that Severinsky varies the setpoint by
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`“operating its engine ‘outside its most fuel efficient operating range, on occasion.’”
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`BMW Reply, 9 (quoting BMW1013, 18:23-25.) BMW confuses the claimed
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`“setpoint” and the actual operating point of the engine. POR, 25-26; PAICE2016,
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`¶¶75-77. The “setpoint” is a parameter used by the controller to select the mode
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`for operating the engine or motor. (PAICE2035 (Davis Tr.), 36:17 – 37:2, 38:1-7.)
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`A shown by Figure 9, the controller compares road load to the setpoint to select
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`motor propulsion mode or engine propulsion mode. POR, 25-26; PAICE2035,
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`14:13 – 15:5. It does not compare road load to the actual operating point of the
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`engine as Dr. Davis admitted. (PAICE2035, 49:12-17.)
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`The operating point of the engine—which BMW confuses with the
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`“setpoint”—is the amount of torque the engine is actually producing at a given
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`time. POR, 26-27. The claimed “setpoint,” however, is the control parameter for
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`2
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`triggering the engine to come on. Once the engine is on, it can operate at any point
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`between 1% and 100% MTO independent of the claimed “setpoint,” which BMW
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`does not dispute. Dr. Davis admitted that the 30% MTO setpoint (in red below) in
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`Figure 7 of the ’634 patent stays fixed while the actual operating point of the
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`engine, i.e., the “Engine Torque Output” (shown in the dashed lines) fluctuates
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`above and below the setpoint. (PAICE2035, 17:14 – 18:6; see also id., 15:9 –
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`16:1, 16:10 – 17:13; PAICE2016, ¶77.)
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`(BMW1001, Fig. 7(a) (annotated).)
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`Moreover, the claims distinguish between the operating point of the engine
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`(in blue) and the setpoint (in red).
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`55. The method of claim 33, further comprising: operating the engine
`at torque output levels less than SP under abnormal and transient
`conditions to satisfy drivability and/or safety considerations.
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`BMW1001, 63:18-20 (emphasis added). Severinsky’s choice to operate the engine
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`below the 60% MTO setpoint does not mean that Severinsky varies the setpoint. It
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`means Severinsky operates the engine inefficiently in certain circumstances (i.e.,
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`below 60% MTO) because other factors require that the engine stay on. POR, 25.
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`Indeed, the engine can turn on (and operate) for many reasons such as safety
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`considerations (as contemplated in claim 55) or because the battery state of charge
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`is too low. (PAICE2016, ¶65.) This is not evidence of varying a torque-based
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`setpoint. As Dr. Shahbakhti explained, hybrid control systems arbitrate between
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`different algorithms for turning the engine on/off. (Id., ¶72.) Indeed, even the
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`Board previously found that Severinsky uses two distinct control algorithms—a
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`torque algorithm and “speed-responsive hysteresis” algorithm—for turning the
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`engine on/off. (BMW1059, 17.)
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`Second, BMW’s argument that Severinsky’s separate on/off speed
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`thresholds are evidence of varying the setpoint is incorrect. Regardless of the fact
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`that these are speed thresholds (as opposed to a torque “setpoint”), they are never
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`varied—they are “factory-set parameters” as BMW admits. Reply, 4.
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`Claim 33 requires a “monitoring patterns of vehicle operation over time and
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`varying the SP accordingly.” The word “accordingly” indicates that varying the
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`setpoint occurs based on vehicle monitoring over time. In other words, the
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`variation takes place in response to the vehicle’s previous activity. BMW,
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`4
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`however, provides no evidence that Severinsky’s controller selects between the
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`engine on and engine off speed thresholds during vehicle operation. BMW admits
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`these speed thresholds are “factory-set parameters” (Reply, 4)—they are written
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`into the source code and do not change. (PAICE2016, ¶¶60-61.)
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`Moreover, Severinsky’s separate on/off speed thresholds are not evidence of
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`any type of varying. Severinsky’s upper speed range (i.e., “30-35 mph”) and lower
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`speed range (i.e., “20-25 mph”) are two separate speed thresholds much like a
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`thermostat may turn an air conditioner on at 75 degrees and turn the air conditioner
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`off at 74 degrees. POR, 21; PAICE2016, ¶¶61-62. BMW’s insinuation that
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`Severinsky’s controller “switch[es] between two (or more) values that represent
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`the ‘setpoint’ at any given time” is wrong. Reply, 11. Severinsky does not switch
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`between setpoints. Severinsky’s controller always uses the upper “30-35 mph”
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`speed threshold to turn the engine on and always uses the lower “20-25 mph” to
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`turn the engine off.1 (PAICE2016, ¶¶61-62.)2 In other words, Severinsky uses
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`different thresholds for different purposes. There is no variation or dynamic
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`“switching” of the different thresholds to speak of.
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`Claim 39 of the ‘634 patent (which depends from claim 33) in fact
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`separately recites the use of two fixed setpoints, SP and SP2:
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`39. The method of claim 33, further comprising: monitoring the RL
`over time; wherein said operating the internal combustion engine to
`propel the hybrid vehicle is performed when: … or the RL>a second
`setpoint (SP2), wherein the SP2 is a larger percentage of the MTO
`than the SP.
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`(BMW1001, 61:42-48 (emphasis added).)3
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`1 BMW falsely states that Patent Owners concede that “Severinsky uses ‘two
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`separate speed thresholds’ for turning off the engine.” Reply, 11. But Patent
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`Owners stated that Severinsky discloses a speed threshold for turning the engine
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`on and a speed threshold for turning the engine off. POR, 21.
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`2 Dr. Davis admitted that the “30-35 mph” threshold is for turning the engine on
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`and the “20-25 mph” threshold is for turning the engine off. (PAICE2035, 7:2-7,
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`8:24 – 9:7.)
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`3 BMW’s assertion that the ’634 patent uses “hysteresis” to “vary[] said setpoint”
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`is false. Consistent with claim 39, the ’634 patent uses different setpoints for
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`Finally, BMW’s reply relies on speed thresholds in an attempt to show
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`varying the claimed torque setpoint. POR, 21-23. BMW’s reply shies away from
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`the single 60% MTO value that the Board found is the “setpoint,” and its new and
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`baseless assertions that Severinsky’s “speed-responsive hysteresis” is a
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`“misnomer” and “‘speed thresholds’ are also torque thresholds by their very
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`nature” have no foundation in reality, much less Severinsky’s disclosure. Reply,
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`11. But BMW does not dispute that speed and torque are independent variables or
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`Dr. Shahbakhti’s example of how the instantaneous torque may vary between -80
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`and 180 Nm for a single fixed speed. (PAICE, ¶¶70-71.)
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`different purposes. (BMW1001, 41:4-47.) This is not evidence of varying the
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`setpoint. These two setpoints are written into source code during the vehicle
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`design phase and are not based on monitoring vehicle operation over time.
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`(PAICE2016, ¶¶61-62.)
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`(Id., ¶¶70-71.) It makes no sense to have a single torque/speed setpoint for two
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`independent variables that vary drastically. BMW provides no cogent explanation
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`for why Severinsky would not use parallel control systems to separately control for
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`separate variables.
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`Severinsky’s speed thresholds are written in units of speed (miles per hour),
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`not units of torque. BMW cannot rewrite Severinsky, and Dr. Davis’s identical
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`statements are “[u]ntethered to any supporting evidence” and cannot support an
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`obviousness finding. TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1362
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`(Fed. Cir. 2019) (rejecting expert’s “ipse dixit declaration” that is “[u]ntethered to
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`any supporting evidence…”).4 The Board previously found Severinsky’s 60%
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`MTO value is the claimed “setpoint” (BMW1059, 13-14), and BMW has failed to
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`show that Severinsky’s “speed-responsive hysteresis” would vary this value.5
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`Patent Owners are not “relitigating” anything by pointing out that
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`Severinsky’s “speed-responsive hysteresis” is separate from the torque “setpoint”
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`(and related control algorithm) that the Board previously identified. The Board did
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`not find that Severinsky’s speed thresholds were the claimed “setpoint.” The
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`Board instead stated “that Severinsky may teach an additional hysteresis feature as
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`4 BMW’s new argument that speed thresholds are torque thresholds goes beyond
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`the proper scope of the Reply. BMW relied on “speed-responsive hysteresis” for a
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`claim about torque and should have presented argument attempting to connect
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`these different concepts in its Petition. TPG, 74 (Nov. 2019); Ariosa Diagnostics
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`v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015).
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`5 BMW relies on a secondary reference (Frank) to argue it would be obvious for
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`Severinsky to use two different setpoints rather than a single 60% MTO setpoint,
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`calling into question BMW’s new theory that Severinsky’s separate on/off speed
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`thresholds are really two torque setpoints in disguise. Petition, 47-49, 51 (“It
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`would have been a simple design choice to apply Frank’s hysteresis strategies to
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`Severinsky’s 60% of MTO torque ‘setpoint’….”).
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`a way of controlling unintended engine starts during temporary dips in speed does
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`not preclude Severinsky from also teaching the use of a torque value….”
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`(BMW1059, 17). In other words, the Board found that Severinsky uses two
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`distinct control algorithms for turning the engine on/off and the “speed-responsive
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`hysteresis” algorithm did not preclude use of the torque algorithm.
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`2.
`BMW’s reasons to combine are flawed
`BMW’s defense of its reasons to combine—consisting of vacillations and
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`contradictions—solidify the weakness of its combination. BMW’s mystifying
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`discussion of its proposed combination has left even BMW confused as to how it
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`intends to modify Severinsky based on Nii’s “pattern information.” BMW both
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`argues that “Petitioners do not propose that average power consumption be used to
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`turn Severinsky’s engine on or off” (Reply, 7) and that “Nii’s … average power
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`requirement could [] be used to adjust Severinsky’s setpoint for turning off the
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`engine.” Id. (emphasis added). BMW cannot carry its burden of providing an
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`“explanation as to how or why the references would be combined to produce the
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`claimed invention.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
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`2016).
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` BMW cannot rehabilitate its defective reason to combine. For all the
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`many things that BMW does say, BMW’s silence is more revealing. BMW does
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`not dispute that:
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` Nii does not disclose a “setpoint” or selecting between electric motor
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`propulsion and engine propulsion;
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` Nii’s engine is always decoupled from the road wheels and the instantaneous
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`torque demand;
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` Nii only uses “pattern information” to set the generator output for battery
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`charging;
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` Nii’s “pattern information” does not include instantaneous vehicle
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`requirement information; and
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` Nii does not teach any “pattern information” other than average power.
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`BMW’s claim that “knowing precisely how a vehicle will actually be operated is
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`the ‘holy grail’ for fine-tuning hybrid vehicle efficiency” fails to paper over these
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`cracks. Reply, 3. The claims do not broadly claim fine-tuning a hybrid vehicle,
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`and Nii does teach anything useful for “fine-tuning” Severinsky’s alleged setpoint.
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`BMW’s “bodily incorporation” criticism rings hollow. BMW does not
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`dispute that Nii solely uses its “pattern information” to set a generator output for
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`battery charging in a series hybrid, which has nothing to do with varying the
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`claimed “setpoint” for operating mode selection in a parallel hybrid. Nor does
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`BMW articulate what “pattern information” a POSA would use from Nii other than
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`average power. If BMW could have identified any relevant disclosures in Nii, it
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`would have. Yet, BMW still cannot cogently explain its combination.
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`First, BMW’s philosophical debate about whether it is possible to combine
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`series and parallel hybrid vehicles is inapposite. Patent Owners have not argued
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`that series and parallel hybrid vehicles can never be combined. And BMW’s
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`assertion that its combination is sound because series and parallel hybrid vehicles
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`are both “concerned with enhancing hybrid vehicle efficiency” is tantamount to
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`saying a POSA would add the rotor blades of a helicopter to a hot air balloon
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`because both are concerned with flying. Reply, 5. This oversimplified analysis
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`cannot demonstrate obviousness.
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`BMW’s discussion about operating modes in series and parallel is also
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`irrelevant. Nii has no operating modes related to selecting different sources of
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`vehicle propulsion. Moreover, BMW’s discussion about operating modes is
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`supported solely by Dr. Davis’s testimony that it is possible for series and parallel
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`vehicles to use a “Max. SOC-PPS control strategy” (Reply, 5 (citing BMW1088,
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`¶¶38-44)), which “emphasizes maintaining the SOC.” (PAICE2020, 244.)6 Yet,
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`6 BMW’s criticism of Dr. Shahbakhti’s use of the Ehsani textbook from 2005 is
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`unwarranted. Dr. Shahbakhti uses the Ehsani textbook to illustrate how series and
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`parallel hybrid architectures are configured and not to form opinions about the
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`state of the art in 1998. BMW also improperly relies on Sundance, Inc. v.
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`DeMonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) to suggest that
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`BMW does not assert that “Max. SOC-PPS control strategy” has any relevance to
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`the claimed setpoint or that Severinsky or Nii use any control strategy resembling
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`“Max. SOC-PPS.” BMW’s detour into other hypothetical combinations not before
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`the Board is irrelevant.7
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`Second, BMW’s attempt to identify similarities between Severinsky and Nii
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`is based on the false assertion that Nii’s engine output is based on the
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`instantaneous torque requirements. Reply, 6. Nii uses “travel patterns” to isolate
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`Dr. Shahbakhti’s age makes his testimony less reliable. But Sundance is about
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`excluding a patent law expert (with no technical expertise) from opining on matters
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`of infringement and invalidity. Id. at 1365.
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`7 BMW’s misrepresents that Dr. Shahbakhti provided “counter-testimony.” (Reply,
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`6.) Dr. Shahbakhti previously opined that it would have been obvious to modify a
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`parallel hybrid by adding braking grids connected to the traction motor for
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`absorbing dynamic braking energy when the battery cannot receive all of the
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`energy. BMW1098, ¶75 (“a [POSA] would have been motivated to modify Kira’s
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`drive system to incorporate a dynamic braking grid as described by Kumar.”) This
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`opinion has nothing to do with Dr. Shahbakhti’s present opinion that a POSA
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`would not modify Severinsky’s “setpoint” based on Nii’s alleged “pattern
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`information.”
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`the steady state engine operation from the driver demand, which is possible in
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`series vehicles where the engine is always decoupled from the wheels.
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`(PAICE2016, ¶98.) This solution is antithetical to Severinsky, which switches
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`operating modes based on the instantaneous demands of the driver. POR, 32.
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`BMW’s claim that Nii’s engine changes based on the instantaneous torque
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`requirement (Reply, 6) is at odds with the primary purpose of Nii’s invention.
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`(PAICE2035, 22:5-7 (Dr. Davis admitting that “an overall goal [of Nii] might be to
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`try and just operate the engine as [sic] single speed, single load operating point”).)8
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`Indeed, even Dr. Davis admitted that engines in series vehicles (like Nii) are “not
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`mechanically connected to the wheels and the engine is therefore controlled
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`independently of driving conditions.” (BMW1008, ¶71 (emphasis added).)
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`Third, BMW’s confusing explanation of how Severinsky could use Nii’s
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`“average power requirement” information reiterates the incompatibility of the
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`references. BMW again improperly conflates the claimed “setpoint” with the
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`actual operating point of the engine by asserting that a POSA would use “average
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`power consumption … to vary the ‘setpoint’ at which the engine is operated.”
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`POR, 7; see also id. (arguing Severinsky’s “engine would be turned on … while
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`8 The fact that Nii can turn the engine off under high SOC does not make Nii’s
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`controller dependent on road load.
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`14
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`adjusting its setpoints to improve engine efficiency” ). As discussed above in
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`Section II.A.1, the claimed “setpoint” is not the same as the actual operating point
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`of the engine, and BMW’s reliance on this false premise underscores the
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`deficiency of its combination.
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`BMW’s alternative, inconsistent hypothetical—that Nii’s “recognition of
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`vehicle travel patterns or average power requirements could each be used to adjust
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`Severinsky’s setpoint for turning off the engine during hysteresis sooner …”
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`(Reply, 7)—is unsupported and unintelligible. BMW does not explain whether this
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`“average power requirement” is low, high, or somewhere in between. Nor does
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`BMW explain what “vehicle travel patterns” it is referring to or how either would
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`increase fuel economy.
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`BMW cannot make sense of its proposed combination because Nii’s
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`“average power requirement” is not useful in adjusting Severinsky’s setpoint.
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`BMW does not dispute that instantaneous torque cannot be derived from average
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`power or other averages. POR, 35-40. Instead, BMW explains how time averages
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`are calculated, which is a mathematical operation that is not in dispute. Reply, 8-9
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`(arguing high instantaneous torque values would result in a high average value).
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`As the POR explains, the instantaneous torque requirement could be very high
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`15
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`during periods of operation even if there is a low average power requirement (and
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`vice versa), and BMW has no rebuttal on this point. Reply, 8-9.9
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`Finally, BMW’s suggestion that the ’634 patent uses average values is false.
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`The ’634 patent identifies a pattern where the road load “var[ies] between 0 and
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`50% of MTO,” i.e., it moves above and below the setpoint, and adjusts the setpoint
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`to 60% MTO accordingly. (BMW1001, 40:53-61.)10
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`B. Ground 2 – Severinsky in View of Quigley Does Not Render
`Claim 33 Obvious
`BMW’s improper reply arguments cannot salvage its deficient ground.
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`As the Board’s ID recognized, BMW’s “proposed combination appears to lack a
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`rational underpinning.” ID, 40. The Board correctly explained that “Quigley and
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`Dr. Davis’s testimony does not reveal evidentiary support for Petitioner’s
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`contention that Quigley varies a setpoint that constitutes a ‘torque’ value.” ID, 40.
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`Quigley’s “optimal operation” on which BMW relies (Petition, 26) has nothing to
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`9 Dr. Davis’s hypothetical that Severinsky would turn the engine off “using the
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`average power requirement” fails to address this problem. (BMW1088, ¶53.)
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`10 BMW’s reliance on the ’634 patent’s separate discussion about “fluctuat[ions]”
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`of road load cannot be considered an average as BMW claims. Reply, 8 (citing
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`BMW1001, 41:14-29.)
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`16
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`do with adjusting the setpoint.11 And the Board remarked that BMW only
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`mentioned “Severinsky’s hysteresis mode in passing to support its contention.”
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`Id.12
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`In reply, BMW admits that its discussion of Severinsky’s hysteresis “was
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`perhaps more brief” (Reply, 18) and backfills the gaps in the Petition. Id., 17-19.
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`The reply is not the place for BMW to take a second shot at establishing a prima
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`facie case of obviousness, and BMW’s reliance on 27 paragraphs from Dr. Davis’s
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`reply declaration (BMW1088, ¶¶72-98) to remedy its deficient ground is improper.
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`TPG, 73; Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775
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`(Fed. Cir. 2018). BMW’s belated attempt to explain its combination underscores
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`the Board’s observation that BMW’s ground lacks a “rational underpinning.”
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`Notwithstanding BMW’s improper reply arguments, Ground 2 remains
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`lacking because Severinsky does not vary the “setpoint.” BMW fails to address
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`11 Quigley states that its “intelligent controller” is for determining how to balance
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`use of the engine and electric motor (when both the engine and motor are already
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`on) and not for deciding when to employ either the electric motor or the engine.
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`POR, 45-46.
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`12 Severinsky’s “hysteresis mode” does not vary a setpoint and thus does not
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`provide the missing rational underpinning. See Section II.A.
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`17
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`how a POSA would “vary[] said setpoint.” As set forth in Section II.A.1,
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`Severinsky’s “speed-responsive hysteresis” has nothing to do with the varying the
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`alleged torque-based setpoint. (PAICE2016, ¶¶57-77.)
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` Notwithstanding BMW’s improper reply arguments, there remains no
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`reason to combine Severinsky and Quigley. First, BMW’s generic obviousness
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`analysis—that a POSA would incorporate Quigley’s “intelligent” controller to
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`“optimize[]” Severinsky’s setpoint to make Severinsky more efficient—cannot
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`sustain an unpatentability finding. Reply, 15-16. Such vague assertions fail to
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`sufficiently explain how or why a POSA could combine Severinsky and Quigley.
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`TriVascular, 812 F.3d at 1066.
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`BMW fails to identify a single “pattern” in Quigley that would be useful for
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`improving Severinsky. In making its “bodily incorporation” argument, BMW
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`criticizes Patent Owners for focusing on the “parameters” disclosed in Quigley
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`(i.e., total distance and duration). But BMW’s Petition asserted that Quigley’s
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`observation of “habitual usage characteristics” is for the purposes of “estimation of
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`upcoming journey parameters [which] can allow ‘optimal operation with respect to
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`18
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`
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`exhaust emissions and fuel consumption.’” Petition 27 (quoting Ex. 1054, 1).13
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`BMW further argued that a POSA would incorporate this same “optimal
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`operation” into Severinsky. Id. Patent Owners can only respond to BMW.
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`BMW does not explain how any of Quigley’s “parameters” would be useful
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`to Severinsky, especially in regard to adjusting the alleged setpoint (i.e., 60%
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`MTO). BMW does not dispute that these parameters have nothing to do with road
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`load, the instantaneous torque required to propel the vehicle. Moreover, BMW
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`presents no reason why Severinsky would use any of these parameters to modify
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`the setpoint. Petition, 18.14 Ultimately, BMW does not explain how Severinsky
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`would use any teaching from Quigley to improve emissions or fuel economy.
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`Moreover, Dr. Davis admitted in IPR2020-01299 that “the only way you can
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`intelligently modify the controller is based on an understanding of the load
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`13 See also id., 29 (“A POSA would only need to modify Severinsky’s controller
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`logic to use the information reflecting the monitored journey parameters as taught
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`by Quigley….”).
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`14 Total duration and distance could only be used to calculate average vehicle
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`speed. And BMW does not dispute that average values (such as average speed) is
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`not useful for “energy management” in “complex propulsion systems” such as
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`Severinsky’s parallel hybrid. (Ex. 2033 (Guzzella) at 38.)
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`19
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`requirements of the vehicle” (IPR2020-01299, Ex. 1088, ¶17), and Quigley is
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`completely silent on that point.
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`In Reply, BMW argues for the first time that Quigley “would have tracked
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`information such as speed, engine speed, road speed and road load.” Reply, 21.15
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`Yet, BMW fails to explain what would constitute the “pattern” under BMW’s
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`interpretation, much less identify any disclosures in Quigley to support the notion
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`that Quigley’s “patterns” include this information. Nor does BMW explain how
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`Severinsky would use this information to optimize its controller. BMW argues that
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`it does not have to identify any specific “patterns” in Quigley because the claims
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`are not so specific. Reply, 22. But it is BMW’s burden to explain how a POSA
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`would combine the prior art. It is not sufficient to show that separate claim
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`elements were known. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (“[M]ere
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`identification in the prior art of each element is insufficient to defeat the
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`patentability of the combined subject matter as a whole.”).
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`15 Quigley does not track these inputs and instead uses a “GPS data logger.”
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`(BMW1054, 3.)
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`20
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`C. Ground 3 – Severinsky in View of Graf Does Not Render Claim
`33 Obvious
`1.
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`Severinsky in view of Graf does not teach or suggest
`“varying said setpoint accordingly”
`As with Grounds 1 and 2, none of the prior art “var[ies] the SP [setpoint].”
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`Severinsky does not vary a “setpoint” (see section II.A.1), and “Graf’s ‘operating
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`points’ are ‘the points at which the engine
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