`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`Before The Honorable David P. Shaw
`Administrative Law Judge
`
`
`In the Matter of
`
`CERTAIN HYBRID ELECTRIC
`VEHICLES AND COMPONENTS
`THEREOF
`
`
`
`
`
`
`
`Investigation No. 337-TA-1042
`
`
`COMPLAINANTS’ MOTION FOR LEAVE TO FILE A REPLY
`BRIEF IN SUPPORT OF COMPLAINANTS’ MOTION FOR
`SUMMARY DETERMINATION OF ESTOPPEL
`
`Complainants Paice LLC and Abell Foundation seek leave from the Administrative Law
`
`Judge to file the attached Reply In Support of Complainants’ Motion for Summary Determination
`
`of Estoppel (Mtn. Dkt. No. 1042-034). A copy of Complainants’ proposed reply is attached hereto
`
`as Exhibit A. Good cause exists to grant this motion in order to allow Complainants to respond to
`
`Respondent’s arguments that the estoppel provision of 35 U.S.C. § 315(e) does not apply.
`
`Ground Rule 5.e Certification
`
`In accordance with Ground Rule 5.e, Complainants certify that they made reasonable,
`
`good-faith efforts to resolve the issues raised in this motion with counsel for Respondent at least
`
`two business days before filing the instant motion, on September 20, 2017. Counsel for
`
`Respondent did not indicate whether or not Respondent would oppose this motion.
`
`COMPLAINANTS’ MTN. FOR LEAVE TO FILE REPLY (337-TA-1042) – Page 1
`
`

`

`Dated: September 22, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`FISH & RICHARDSON P.C.
`
`By:
`
`
`
`/s/ Brian J. Livedalen
`Ruffin B. Cordell
`Indranil Mukerji
`Ahmed J. Davis
`Ralph A. Phillips
`Thomas S. Fusco
`Brian J. Livedalen
`Daniel A. Tishman
`Laura C. Whitworth
`FISH & RICHARDSON P.C.
`901 15th Street NW, 7th Floor
`Washington, D.C. 20005
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
`
`Counsel for Complainants Paice LLC and
`Abell Foundation, Inc.
`
`
`COMPLAINANTS’ MTN. FOR LEAVE TO FILE REPLY (337-TA-1042) – Page 2
`
`

`

`
`
`
`
`EXHIBIT A
`
`EXHIBIT A
`
`
`

`

`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`Before The Honorable David P. Shaw
`Administrative Law Judge
`
`
`In the Matter of
`
`CERTAIN HYBRID ELECTRIC
`VEHICLES AND COMPONENTS
`THEREOF
`
`
`
`
`
`
`
`Investigation No. 337-TA-1042
`
`
`COMPLAINANTS’ REPLY TO FORD’S
`OPPOSITION TO COMPLAINANTS’ MOTION FOR
`SUMMARY DETERMINATION OF ESTOPPEL (MTN. DKT. NO. 1042-034)
`
`Ford’s opposition impermissibly deviates from the estoppel provision that applies at the
`
`issuance of a final written decision by the PTAB. Ford’s arguments are based on common law
`
`estoppel, which encompasses a different standard for estoppel. Ford chose to litigate validity at
`
`the PTAB and cannot now escape the “strengthened estoppel standard” enacted in the America
`
`Invents Act. See 157 Cong. Rec. S952 (daily ed. Feb. 28, 2011) (statement of Sen. Grassley).
`
`Ford does not dispute the facts presented in Complainants’ initial brief—the PTAB has
`
`issued final written decisions on Ford’s inter partes review petitions challenging claims that Ford
`
`seeks to challenge again using the same art (or other art that Ford knew about when it filed its
`
`petitions) now before the ITC. This issue is ripe for summary determination. Under the plain
`
`meaning of the estoppel provision, Ford is barred from bringing a second invalidity challenge on
`
`these grounds for claims 24 and 28 of the ’347 patent; claim 3 of the ’388 patent; and claims 25,
`
`240, 278, 290, and 292 of the ’634 patent. These serial challenges are the exact type of litigation
`
`tactic Congress intended to eliminate in implementing post-grant procedures.
`
`
`
`
`
`
`
`COMPLAINANTS’ REPLY TO FORD’S OPP. MTN. FOR SUMMARY DETERMINATION – Page 1
`
`

`

`ARGUMENT
`
`Ford’s attacks on the validity of Complainants’ patents are simply a repetition or
`
`repackaging of references that Ford already brought before the PTAB. Ford chose to litigate the
`
`validity of these claims before the PTAB and cannot ignore the consequences of its litigation
`
`strategy. Section 315 provides a clear and unequivocal bar on invalidity challenges based on
`
`grounds brought before the PTAB or grounds Ford reasonably could have brought based on
`
`references already at its disposal in one or more of the twenty-five petitions filed against
`
`Complainants’ patents.
`
`A.
`
`Ford Ignores the Basic Language of the Estoppel Provision
`
`Ford argues that estoppel is inapplicable where the outcome of an IPR is adverse to the
`
`patent holder, and/or where the ultimate outcome remains uncertain due to pending appeal or
`
`remand. See Respondent’s Opp. to Complainants’ MSD of Estoppel (“Respondents’ Opp.”) at
`
`Section III(A), (B), and (D). The outcome and/or finality of the final written decision is,
`
`however, irrelevant to the application of the estoppel provision of section 315(e). The statute
`
`does not contemplate and is completely silent as to the result of the inter partes review. Section
`
`315(e)(2) clearly states the key event for estoppel to apply is a final written decision.
`
`35 U.S.C. § 315(e)(2) provides:
`
`The petitioner in an inter partes review of a claim in a patent under this chapter
`that results in a final written decision under section 318(a), or the real party in
`interest or privy of the petitioner, may not assert either in a civil action arising in
`whole or in part under section 1338 of title 28 or in a proceeding before the
`International Trade Commission under section 337 of the Tariff Act of 1930 that
`the claim is invalid on any ground that the petitioner raised or reasonably could
`have raised during that inter partes review.
`
`
`(emphasis added). There is no mention of the outcome of the review as a triggering requirement
`
`for estoppel to apply. Indeed, the only requirement under the statute is the issuance of a final
`
`
`COMPLAINANTS’ REPLY TO FORD’S OPP. MTN. FOR SUMMARY DETERMINATION (337-TA-1042) – Page 2
`
`
`
`

`

`written decision.1 This interpretation is consistent with the U.S. Court of Appeals for the Federal
`
`Circuit’s holding in Shaw Industries and subsequent district court decisions requiring the
`
`issuance of a final written decision before applying section 315(e)(2). See Shaw Indus. Grp., Inc.
`
`v. Automated Creel Sys., Inc., 817 F.3d 1293, 1297 (Fed. Cir. 2017); see also St. Jude Med., Inc.
`
`v. Volcano Corp., 749 F.3d 1373, 1375-76 (Fed. Cir. 2014) (establishing the two-phased
`
`procedure for inter partes review as first the question of the reasonable likelihood that the
`
`petitioner would succeed in the institution decision and second a decision on the merits of the
`
`question of patentability). Likewise, section 315(e) does not qualify the estoppel on affirmation
`
`by the Federal Circuit or Supreme Court. Reading in such a requirement (as Ford does for claim
`
`3 of the ’388 patent) would delay the estoppel effect for an unforeseen amount of time and
`
`effectively gut the purpose of the statute. H.R. Rep. No. 112-98 at 48 (2011).
`
`The estoppel standard at the PTAB starkly contrasts with the common law requirements
`
`for estoppel, namely, the requirement that the party to be estopped must have been unsuccessful
`
`in its first attempt. See, e.g., New Hampshire v. Maine, 532 U.S. 742, 743 (2001). Indeed, the
`
`cases Ford relies on for the premise that estoppel only applies to adverse decisions discuss
`
`estoppel as a common law doctrine and pre-date the enactment of the AIA and section 315.2
`
`
`
` 1
`
` In fact, the PTAB found that Ford was similarly estopped from making serial challenges to
`patent claims upon a final written decision regardless of whether Ford was successful or
`unsuccessful in the first instance. Ex. 19, Ford Motor Company v. Paice LLC et al., IPR2015-
`00722, Paper No. 36 at 6-9 (P.T.A.B. Sept. 26, 2016).
`2 Ford relies on Parklane Hosiery Co. v. Shore, 439 U.S. 322 (1979) and In re Freeman, 30 F.3d
`1459 (Fed. Cir. 1994) as support for its argument that Ford can only be estopped if the PTAB
`found Complainants’ claims valid. However, both of these cases discuss the common law
`doctrine of collateral estoppel, not statutory estoppel and not section 315. Additionally, Ford
`relies on Evolutionary Intelligence, LLC v. Sprint Nextel Corp. as requiring the invalidity
`challenge to be rejected for statutory estoppel to apply; however, this case discusses the
`
`
`COMPLAINANTS’ REPLY TO FORD’S OPP. MTN. FOR SUMMARY DETERMINATION (337-TA-1042) – Page 3
`
`
`
`

`

`Where Congress has applied a clear standard for estoppel that diverges from common law, the
`
`statutory law applies. See United States v. Texas, 507 U.S. 529, 534 (1993) (holding that
`
`Congress need not affirmatively proscribe a common-law doctrine at issue to abrogate a
`
`common-law principle through enactment of a statute). Thus, Ford has no basis to import an
`
`element of common law estoppel into section 315, which is plainly not present in the statute.
`
`
`
`Moreover, Ford’s argument that a petitioner must be unsuccessful in its invalidity
`
`challenge to be estopped is in direct conflict with another provision of section 315(e)(2)—that
`
`the petitioner is also estopped from asserting invalidity on grounds it reasonably could have
`
`raised. See 35 U.S.C. § 315(e)(2). There can be no dispute that a petitioner was not
`
`unsuccessful in asserting a challenge it never presented to the PTAB. Yet, the statute applies.
`
`Ford’s argument improperly departs from the language of the statute and the legislative intent of
`
`inter partes reviews to limit the number of challenges brought against the same patent claims
`
`using the same grounds of invalidity.
`
`B.
`
`Ford’s Argument is Contrary to the Legislative Intent of Post-Grant
`Procedures
`
`When enacting the AIA, Congress intended to apply “a strengthened estoppel standard to
`
`prevent petitioners from raising in a subsequent challenge the same patent issues that were raised
`
`or reasonably could have been raised in the prior challenge.” 157 Cong. Rec. S952 (daily ed.
`
`
`
`applicability of the statutory estoppel provision as a question of privity, not the scope of section
`315 as applies to the petitioner. See Ex. 10, No. c-13-4513, 2014 WL 819277 (N.D. Cal. Feb.
`28, 2014). Ford likewise relies on Intellectual Ventures II LLC v. SunTrust Banks, Inc. as
`requiring that the PTAB must find the patent valid for estoppel to apply; but the significance of
`estoppel applies in subsequent litigation. See Ex. 11, No. 1:13-cv-02454, 2014 WL 5019911
`(N.D. Ga. Oct. 7, 2014). As the Intellectual Ventures court contemplates, if the PTAB finds the
`patent invalid, the litigation may be moot so there is no need to apply statutory estoppel. See id.
`That is not the case here where the parties have continued to litigate claims on appeal before the
`Federal Circuit.
`
`COMPLAINANTS’ REPLY TO FORD’S OPP. MTN. FOR SUMMARY DETERMINATION (337-TA-1042) – Page 4
`
`
`
`

`

`Feb. 28, 2011) (statement of Sen. Grassley). The legislative history does not require that the
`
`petitioner must be unsuccessful in its challenge for this strengthened estoppel provision to apply.
`
`Instead, Congress’s focus concerned a provision that would “significantly reduce the ability to
`
`use post-grant procedures for abusive serial challenges to patents.” Id. Indeed, Congress
`
`recognized that repeated litigation and administrative attacks on the validity of a patent “would
`
`frustrate the purpose of the [post-grant] section as providing quick and cost effective alternatives
`
`to litigation.” H.R. Rep. No. 112-98 at 48 (2011).
`
`Ford’s attempt to re-litigate before the ITC the same grounds of invalidity contemplated
`
`by the PTAB is the exact kind of serial challenges Congress intended to eliminate with a
`
`strengthened estoppel provision. The PTAB has prohibited these kinds of challenges before the
`
`PTO under the almost-identical estoppel provision section 315(e)(1). Ex. 20, Butamox Advanced
`
`Biofuels LLC v. Gevo, Inc., IPR2014-00581, Paper No. 8 at 12-13 (P.T.A.B. Oct. 14, 2014)
`
`(“Allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment
`
`of patent owners and frustration of Congress’s intent in enacting the [AIA].”) (citing H.R. Rep.
`
`No. 112-48 (2011)). Ford’s challenge is impermissible and frustrates the very purpose of the law
`
`it relied on to challenge many of Complainants’ claims.
`
`C.
`
`Estoppel is Appropriate as To Prior Art That Reasonably Could Have
`Been Raised During an IPR
`
`Ford acknowledges Complainants’ citation to ample authority for the proposition that
`
`estoppel applies to grounds that could have been reasonably raised during an IPR, but attempts to
`
`side step the issue by arguing that “Paice ignores that other courts have held estoppel does not
`
`apply to prior art combinations not at issue during the IPR proceeding.” Respondents’ Opp. at
`
`Section III(C). (emphasis omitted). Ford fails to acknowledge, however, that all but one of the
`
`opinions it cites declined to apply estoppel to grounds raised in the petition but not instituted by
`
`
`COMPLAINANTS’ REPLY TO FORD’S OPP. MTN. FOR SUMMARY DETERMINATION (337-TA-1042) – Page 5
`
`
`
`

`

`the PTAB. Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1300 (Fed. Cir.
`
`2016) (“Shaw raised its Payne-based ground in its petition for IPR. But the PTO denied the
`
`petition as to that ground, thus no IPR was instituted on that ground.”); Ex. 21, Verinata Health,
`
`Inc. v. Ariosa Diagnostics, Inc, 2017 WL 235048 at *4 (N.D. Cal. Jan 9, 2017) (“As Shaw
`
`dictates, the PTAB did not institute on this ground and, therefore, defendants are not estopped
`
`from raising the same invalidity argument in this litigation.”); see also HP Inc. v. MPHJ Tech.
`
`Invs., LLC, 817 F.3d 1339, 1347 (Fed. Cir. 2016) (“[T]he noninstituted grounds do not become a
`
`part of the IPR . . . . [T]he noninstituted grounds were not raised and, as review was denied,
`
`could not be raised in the IPR.”). Here, as detailed in Complainants’ papers, the prior art at issue
`
`was not raised in petitions directed at the asserted patents despite Ford’s knowledge of said prior
`
`art as evidenced by Ford’s use of the prior art in question in other IPR proceedings. See
`
`Complainants’ Memo ISO MSD at Section III(B).
`
`Indeed, Ford cites only one case for the proposition that estoppel should not extend to
`
`“prior art references that were never presented to the PTAB at all.” Intellectual Ventures I LLC
`
`v. Toshiba Corp., No. 13-453-SLR, 221 F. Supp. 3d 534, 553-54 (D. Del. 2016). This district
`
`court decision is not binding on the Commission, and should not be deemed persuasive when
`
`viewed in light of the many cases holding otherwise. See generally Complainants’ Memo ISO
`
`MSD at 8; see also Ex. 9, Douglas Dynamics, LLC v. Meyer Prods. LLC, No. 14-cv-886-jdp,
`
`2017 WL 1382556 at *4-*5 (W.D. Wisc. Apr. 18, 2017) (applying “estoppel to grounds not
`
`asserted in the IPR petition, so long as they are based on prior art that could have been found by
`
`a skilled searcher’s diligent search”); Ex. 21, Verinata Health, Inc., 2017 WL 235048 at *4
`
`(holding that, where “the PTAB did not institute on this exact ground … the question is whether
`
`defendants ‘raised or reasonably could have raised’ [the ground] during the IPR proceedings.”)
`
`
`COMPLAINANTS’ REPLY TO FORD’S OPP. MTN. FOR SUMMARY DETERMINATION (337-TA-1042) – Page 6
`
`
`
`

`

`CONCLUSION
`
`For at least these reasons, and those set forth in Complainants’ initial brief, Complainants
`
`respectfully request that Ford be estopped from challenging validity of claims 24 and 28 of the
`
`’347 patent; claim 3 of the ’388 patent; and claims 25, 240, 278, 290, and 292 of the ’634 patent
`
`under 35 U.S.C. § 315(e).
`
`Dated: September 22, 2017
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`FISH & RICHARDSON P.C.
`
`By:
`
`
`
`/s/ Brian J. Livedalen
`Ruffin B. Cordell
`Indranil Mukerji
`Ahmed J. Davis
`Ralph A. Phillips
`Thomas S. Fusco
`Brian J. Livedalen
`Daniel A. Tishman
`Laura C. Whitworth
`FISH & RICHARDSON P.C.
`901 15th Street NW, 7th Floor
`Washington, D.C. 20005
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
`
`Counsel for Complainants Paice LLC and
`Abell Foundation, Inc.
`
`
`
`
`
`
`COMPLAINANTS’ REPLY TO FORD’S OPP. MTN. FOR SUMMARY DETERMINATION (337-TA-1042) – Page 7
`
`

`

`CERTIFICATE OF SERVICE
`I hereby certify that true and correct copies of the foregoing document,
`COMPLAINANTS’ MOTION FOR LEAVE TO FILE A REPLY BRIEF IN SUPPORT
`OF COMPLAINANTS’ MOTION FOR SUMMARY DETERMINATION OF
`ESTOPPEL, have been filed and served on this 22nf day of September, 2017, on the following:
`
`The Honorable Lisa R. Barton
`Secretary
`U.S. International Trade Commission
`500 E Street SW
`Washington D.C. 20436
`
` Via First Class Mail
` Via Hand Delivery
` Via Overnight Delivery
` Via EDIS
`
`
`The Honorable David P. Shaw
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, D.C. 20436
`
`
`Pyong Yoon
`Attorney Advisor
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, D.C. 20436
`pyong.yoon@usitc.gov
`
`
`Jamie D. Underwood
`Brian D. Hill
`ALSTON & BIRD LLP
`950 F Street, NW
`Washington, DC 20004
`Telephone: (202) 239-3300
`Facsimile: (202) 239-3333
`Email: Ford-ITC337@alston.com
`
`Counsel for Respondent Ford Motor Company
`
`
` Via First Class Mail
` Via Hand Delivery
` Via Overnight Delivery
` Via Electronic Mail
`
` Via First Class Mail
` Via Hand Delivery
` Via Overnight Delivery
` Via Electronic Mail
`
` Via First Class Mail
` Via Hand Delivery
` Via Federal Express
` Via Electronic Mail
`
` 
`
`                                                                                                 
`
`
`
`
`
`
`
`
`
`/s/ Patrick Edelin, Jr.
`Patrick Edelin, Jr.
`
` 
`
`
`
`

`

`EXHIBIT 19
`
`EXHIBIT 19
`
`
`
`

`

` Paper 36
`Trials@uspto.gov
`571-272-7822 Entered: September 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00722
`Patent 7,237,634 B2
`____________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DeFRANCO, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`I. INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, we dismiss the inter
`partes review with respect to claims 161, 215, 228, 233, 235, 236, and 237,
`and determine that Petitioner has shown by a preponderance of the evidence
`
`

`

`Case IPR2015-00722
`Patent 7,237,634 B2
`
`that claims 173, 239, and 240 of U.S. Patent No. 7,237,634 B2 are
`unpatentable.
`
`A. Procedural History
`Petitioner, Ford Motor Company, filed a Petition requesting an inter
`partes review of claims 33, 36, 42–44, 46, 50–52, 55, 78, 161, 173, 215,
`228, 233, 235–237, 239, and 240 of U.S. Patent No. 7,237,634 B2
`(Ex. 1260, “the ’634 patent”). Paper 1 (“Pet.”). Patent Owner, Paice LLC &
`The Abell Foundation, Inc., filed a Preliminary Response in both unredacted
`and redacted forms. Papers 10, 11 (“Prelim. Resp.”). Upon consideration of
`the Petition and Preliminary Response, on October 26, 2015, we instituted
`an inter partes review of claims 161, 173, 215, 228, 233, 235–237, 239, and
`240, pursuant to 35 U.S.C. § 314. Paper 13 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 18 (“PO Resp.”)) and Petitioner filed a Reply (Paper 26
`(“Pet. Reply”)).1 An oral hearing was held on June 28, 2016, and a
`transcript of the hearing is included in the record (Paper 35 (“Tr.”)).
`B. Related Proceedings
`The ’634 patent is involved in Paice LLC v. Ford Motor Co., No.
`1-14-cv-00492, filed on February 19, 2014, in the United States District
`Court for the District of Maryland. Pet. 2. Petitioner twice filed an earlier
`Petition for inter partes review of the ’634 patent, and we instituted trial in
`both proceedings and subsequently entered final written decisions. Ford
`
`1 In addition, Patent Owner filed a Motion for Observation on Cross-
`Examination (Paper 28) and Petitioner filed a Response to Motion for
`Observation on Cross-Examination (Paper 31), both of which have been
`considered.
`
`2
`
`

`

`Case IPR2015-00722
`Patent 7,237,634 B2
`
`Motor Co. v. Paice LLC & The Abell Foundation, Inc., Case IPR2014-00904
`(Papers 13 and 41), and Ford Motor Co. v. Paice LLC & The Abell
`Foundation, Inc., Case IPR2014-01416 (Papers 9 and 26). The ’634 patent
`also is involved in the following inter partes review proceedings: IPR2015-
`00606, IPR2015-00758, IPR2015-00784, IPR2015-00785, IPR2015-00787,
`IPR2015-00790, IPR2015-00791, IPR2015-00799, IPR2015-00800, and
`IPR2015-00801.
`
`C. The ’634 Patent (Ex. 1260)
`The ’634 patent describes a hybrid vehicle with an internal
`combustion engine, at least one electric motor, and a battery bank, all
`controlled by a microprocessor that directs torque transfer between the
`engine, the motor, and the drive wheels of the vehicle. Ex. 1260, 17:17–56,
`Fig. 4. The microprocessor compares the vehicle’s torque requirements and
`the engine’s torque output against a predefined setpoint and uses the results
`of the comparison to control the vehicle’s mode of operation, e.g., straight-
`electric, engine-only, or hybrid. Id. at 40:16–49. The microprocessor
`utilizes a hybrid control strategy that operates the engine only in a range of
`high fuel efficiency, which occurs when the instantaneous torque required to
`drive the vehicle, or road load (RL), reaches a setpoint (SP) of
`approximately 30% of the engine’s maximum torque output (MTO). Id. at
`20:61–67; see also id. at 13:64–65 (“the engine is never operated at less than
`30% of MTO, and is thus never operated inefficiently”). Operating the
`engine in a range above the setpoint but substantially less than the maximum
`torque output maximizes fuel efficiency and reduces pollutant emissions of
`the vehicle. Id. at 15:55–58.
`
`3
`
`

`

`Case IPR2015-00722
`Patent 7,237,634 B2
`
`
`D. Illustrative Claims
`Petitioner challenges independent claim 161 and dependent claim 173,
`which depends directly from claim 161. Petitioner also challenges
`independent claim 215 and dependent claims 228, 233, 235–237, 239, and
`240, which depend directly or indirectly from claim 215.
`Claims 161 and 215 are reproduced below:
`161. A method for controlling a hybrid vehicle, comprising:
`
`determining instantaneous road load (RL) required to
`propel the hybrid vehicle responsive to an operator command;
`
`wherein the hybrid vehicle is operated in a plurality of
`operating modes corresponding to values for the RL and
`setpoint (SP);
`operating at least one first electric motor to propel the
`hybrid vehicle when the RL required to do so is less than a the
`SP;
`
`wherein said operating the at least one first electric motor
`to drive the hybrid vehicle composes a low-load operation
`mode I;
`
`operating an internal combustion engine of the hybrid
`vehicle to propel the hybrid vehicle when the RL required to do
`so is between the SP and a maximum torque output (MTO) of
`the engine, wherein the engine is operable to efficiently produce
`torque above the SP, and wherein the SP is substantially less
`than the MTO;
`
`4
`
`

`

`Case IPR2015-00722
`Patent 7,237,634 B2
`
`
`
`
`wherein said operating the internal combustion engine of
`
`the hybrid vehicle to propel the hybrid vehicle composes a
`high-way cruising operation mode IV;
`operating both the at least one electric motor and the
`engine to propel the hybrid vehicle when the torque RL
`required to do so is more than the MTO;
`wherein said operating both the at least one first electric
`motor and the engine to propel the hybrid vehicle composes an
`acceleration operation mode V;
`
`receiving operator input specifying a change in required
`torque to be applied to wheels of the hybrid vehicle; and
`if the received operator input specifies a rapid increase in
`the required torque, changing operation from operating mode I
`directly to operating mode V.
`Ex. 1260, 73:42–74:9.
`
`215. A method for controlling a hybrid vehicle,
`comprising:
`
`determining instantaneous road load (RL) required to
`propel the hybrid vehicle responsive to an operator command;
`
`operating at least one electric motor to propel the hybrid
`vehicle when the RL required to do so is less than a setpoint
`(SP);
`operating an internal combustion engine of the hybrid
`
`vehicle to propel the hybrid vehicle when the RL required to do
`so is between the SP and a maximum torque output (MTO) of
`the engine, wherein the engine is operable to efficiently produce
`torque above the SP, and wherein the SP is substantially less
`than the MTO; and
`
`operating both the at least one electric motor and the
`engine to propel the hybrid vehicle when the torque RL
`required to do so is more than the MTO; and
`
`regeneratively charging a battery of the hybrid vehicle
`when instantaneous torque output of the engine>the RL, when
`the RL is negative, and/or when braking is initiated by an
`operator of the hybrid vehicle.
`Id. at 79:10–31.
`
`
`
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`Case IPR2015-00722
`Patent 7,237,634 B2
`
`
`Basis Challenged Claim(s)
`
`§ 103
`
`161, 215, 228, 233,
`and 235–237
`
`§ 103
`
`§ 103
`
`239
`
`173 and 240
`
`E. Grounds of Unpatentability
`We instituted an inter partes review of claims 161, 173, 215, 228,
`233, 235–237, 239, and 240 on the following grounds:
`
`Reference[s]
`Ibaraki ’882 2 and the general
`knowledge of a person of ordinary
`skill in the art (“POSA”)
`Ibaraki ’882, Ibaraki ’626 3, and the
`general knowledge of a POSA
`Ibaraki ’882, Suga 4, and the general
`knowledge of a POSA
`
`
`
`II. ANALYSIS
`A. Petitioner Estoppel
`On March 10, 2016, we rendered a final written decision of claims
`
`161, 215, 228, 233, and 235–237 of the ’634 patent in IPR2014-01416.
`Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc., Case IPR2014-
`01416 (PTAB March 10, 2016) (Paper 26). Patent Owner argues that,
`pursuant to 35 U.S.C. § 315(e)(1), Petitioner may not maintain its challenge
`of claims 161, 215, 228, 233, and 235–237. PO Resp. 17–18. Petitioner
`responds that it is not estopped because it was necessary for it to file
`
`
`2 U.S. Patent No. 5,789,882, issued Aug. 4, 1998 (Ex. 1262) (“Ibaraki
`’882”).
`3 U.S. Patent No. 6,003,626, issued Dec. 21, 1999 (Ex. 1263) (“Ibaraki
`’626”).
`4 U.S. Patent No. 5,623,104, issued Apr. 22, 1997 (Ex. 1264) (“Suga”).
`
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`

`Case IPR2015-00722
`Patent 7,237,634 B2
`
`multiple petitions to address dependent claims 173, 239, and 240. Pet.
`Reply 4.
`Under 35 U.S.C. § 315(e)(1), a petitioner who has obtained a final
`written decision on a patent claim in an inter partes review may not
`maintain a subsequent proceeding with respect to that same claim on a
`ground that it “reasonably could have raised” in the original proceeding.
`Specifically, section 315(e)(1) provides:
`(e) Estoppel.—
`(1) Proceedings before the office.—The petitioner in
`an inter partes review of a claim in a patent under this
`chapter that results in a final written decision under section
`318(a) . . . may not request or maintain a proceeding before
`the Office with respect to that claim on any ground that the
`petitioner raised or reasonably could have raised during that
`inter partes review.
`
`
`
`On March 10, 2016, a final written decision was entered in IPR2014-
`01416, in which we determined that claims 161, 215, 228, 233, and 235–237
`of the ’634 patent are unpatentable. Petitioner in this proceeding is the same
`Petitioner in IPR2014-01416. The grounds raised by Petitioner in IPR2014-
`01416 against claims 161, 215, 228, 233, and 235–237 were not the same as
`the grounds raised against those claims in this proceeding. Nonetheless,
`Ibaraki ’882 was cited during prosecution that led to the ’634 patent and is
`listed on the face of the ’634 patent. Ex. 1260. Petitioner does not argue
`that it reasonably could not have raised its challenge to claims 161, 215, 228,
`233, and 235–237 based on Ibaraki ’882 in IPR2014-01416. Pet. Reply 4.
`We determine that Petitioner reasonably could have raised this challenge in
`IPR2014-01416. Accordingly, Petitioner is estopped under 35 U.S.C.
`§ 315(e)(1) from maintaining the grounds based on Ibaraki ’882 against
`
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`Case IPR2015-00722
`Patent 7,237,634 B2
`
`claims 161, 215, 228, 233, and 235–237. We dismiss the inter partes review
`with respect to claims 161, 215, 228, 233, and 235–237.
`Although we determine it is necessary to address the parties’
`contentions with respect to independent claims 161 and 215 because claim
`173 depends from claim 161 and claims 239 and 240 depend from claim
`215, we do not otherwise provide a final written decision on the merits with
`respect to claims 161, 215, 228, 233, and 235–237, or again hold those
`claims to be unpatentable.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable construction standard, claim terms are generally given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a
`claim term must be set forth with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the following claim terms: “road
`load,” “mode I,” “low-load operation mode I,” “high-way cruising operation
`mode IV,” “acceleration operation mode V,” and “abnormal and transient
`conditions.” Pet. 10, 12–13. In our Decision to Institute, we interpreted
`these terms. Dec. 9, 11–15. Neither party has indicated that our
`interpretations were improper and we do not perceive any reason or evidence
`that now compels any deviation from our initial interpretations.
`Accordingly, the following constructions apply to this Decision:
`
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`

`Case IPR2015-00722
`Patent 7,237,634 B2
`
`
`Claim Term
`road load or RL
`
`mode I or low-load operation mode
`I
`
`high-way cruising operation mode
`IV
`
`acceleration operation mode V
`
`abnormal and transient conditions
`
`Construction
`the amount of instantaneous torque
`required to propel the vehicle, be it
`positive or negative
`a mode of operation of the vehicle,
`in which all torque provided to the
`wheels is supplied by an electric
`motor
`a mode of operation in which all
`torque provided to the wheels is
`supplied by the internal combustion
`engine
`a mode of operation in which torque
`provided to the wheels is supplied
`by the internal combustion engine
`and at least one electric motor
`include starting the engine and
`stopping the engine
`
`
`For purposes of this decision, we find it necessary to construe
`“setpoint” and the “operating limitations” found in claims 173, 239, and 240.
`Setpoint (SP)
`The term “setpoint” or “SP” is recited in independent claims 161 and
`
`215, and, thus, necessarily is included in dependent claims 173, 239, and
`240. Petitioner proposes that “setpoint” or “SP” be construed, in the context
`of these claims, as “predetermined torque value.” Pet. 10–12. Patent Owner
`argues that “setpoint” or “SP” be construed as “a definite, but potential
`
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`Case IPR2015-00722
`Patent 7,237,634 B2
`
`variable value at which a transition between operating modes may occur.”
`PO Resp. 8.5
`We agree with Petitioner that the claims compare the setpoint either to
`an engine torque value or a torque based “road load” value. Pet. 10–12.
`Each of claims 161 and 215 recites a condition “when the RL required to do
`so is less than a setpoint (SP).” Ex. 1260, 73:51–52, 79:16–17. Each of
`claims 161 and 215 further recites a range established by the setpoint at one
`end, and the maximum torque output of the engine at the other end, by the
`language “when the RL required to do so is between the SP and a maximum
`torque output (MTO) of th