Ford Motor Companyv.Paice LLC

Patent Trial and Appeal Board

Dec 10, 2015

11229762 (P.T.A.B. Dec. 10, 2015)

Trials@uspto.gov Paper 41
571-272-7822 Entered: December 10, 2015

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 IPR2014-00904
Patent 7,237,634 B2
____________

Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
CARL M. DEFRANCO, Administrative Patent Judges.

DEFRANCO, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
Ford Motor Company (“Ford”) filed a Petition (“Pet.”) for inter partes
review of claims 1, 14, 16, 18, and 24 of U.S. Patent No. 7,237,634 B2 (“the
’634 patent”), which is owned by Paice LLC & The Abell Foundation, Inc.
(collectively, “Paice”). In a preliminary proceeding, we decided to institute
trial (“Dec. Inst.”) because Ford demonstrated a reasonable likelihood that
the challenged claims are unpatentable under 35 U.S.C. § 103. In due
course, Paice filed a Patent Owner Response (“PO Resp.”), and Ford
followed with a Reply (“Reply”). Having heard oral argument on this
matter,1 and pursuant to our jurisdiction under 35 U.S.C. § 6(c), we
determine Ford has proven, by a preponderance of the evidence, that
claims 1, 14, 16, 18, and 24 are unpatentable
II. BACKGROUND
A. The ’634 Patent 2
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 controls the direction of torque between
the engine, motor, and drive wheels of the vehicle. Ex. 1001, 17:17–56,
Fig. 4. The microprocessor monitors the vehicle’s instantaneous torque
requirements, or road load, to determine the source of torque necessary to
propel the vehicle, be it the engine, the motor, or both. Id. at 11:63–65.

1 A transcript (“Tr.”) has been entered into the record. Paper 39.
2 The ’634 patent is also the subject of co-pending district court actions,
including Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md., filed
Feb. 19, 2014), and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
(D. Md., filed Feb. 16, 2012). Pet. 1; PO Resp. 6. We are informed that, in
the latter action, a jury trial was completed on October 1, 2015, and the
parties are currently engaged in post-trial briefing.
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Aptly, the ’634 patent describes the vehicle’s various modes of operation as
an engine-only mode, an all-electric mode, or a hybrid mode. Id. at 35:63–
36:55, 37:24–38:8.
In summarizing the invention, the ’634 patent states that the
microprocessor selects the appropriate mode of operation “in response to
evaluation of the road load, that is, the vehicle’s instantaneous torque
demands and input commands provided by the operator of the vehicle.” 3 Id.
at 17:40–45. More specifically, “the microprocessor can effectively
determine the road load by monitoring the response of the vehicle to the
operator’s command for more power.” Id. at 37:42–49. “[T]he torque
required to propel the vehicle [i.e., road load] varies as indicated by the
operator’s commands.” Id. at 38:9–11. For example, the microprocessor
“monitors the rate at which the operator depresses pedals [for acceleration
and braking] as well as the degree to which [the pedals] are depressed.” Id.
at 27:26–38. These operator input commands are provided to the
microprocessor “as an indication that an amount of torque” from the engine
“will shortly be required.” Id. at 27:41–57.
The microprocessor then compares the vehicle’s torque requirements
against a predefined “setpoint” and uses the results of the comparison to
determine the vehicle’s mode of operation. Id. at 40:16–49. The
microprocessor may utilize a control strategy that runs the engine only in a
range of high fuel efficiency, such as when the torque required to drive the
vehicle, or road load (RL), reaches a setpoint (SP) of approximately 30% of

3 The ’634 patent contrasts the claimed invention to prior control strategies
“based solely on speed,” which are “incapable of responding to the
operator’s commands, and will ultimately be unsatisfactory.” Ex. 1001,
13:39–42.
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the engine’s maximum torque output (MTO). Id. at 20:61–67, 37:24–44; see
also id. at 13:64–65 (“the engine is never operated at less than 30% of MTO,
and is thus never operated inefficiently”). The microprocessor also may
monitor other operating parameters to control the vehicle’s mode of
operation, such as the battery’s state of charge and the operator’s driving
history over time. Id. at 19:63–20:3; see also id. at 37:20–23 (“according to
one aspect of the invention, the microprocessor 48 controls the vehicle’s
mode of operation at any given time in dependence on ‘recent history,’ as
well as on the instantaneous road load and battery charge state”). According
to the ’634 patent, this microprocessor control strategy maximizes fuel
efficiency and reduces pollutant emissions of the hybrid vehicle. Id. at
15:55–58.
B. The Challenged Claims
Of the challenged claims, claim 1 is the only independent and claims
14, 16, 18, and 24 depend therefrom. Claim 1 recites:
1. A hybrid vehicle, comprising:
one or more wheels;
an internal combustion engine operable to propel the
hybrid vehicle by providing torque to the one or more wheels;
a first electric motor coupled to the engine;
a second electric motor operable to propel the hybrid
vehicle by providing torque to the one or more wheels;
a battery coupled to the first and second electric motors,
operable to: provide current to the first and/or the second
electric motors; and accept current from the first and second
electric motors; and
a controller, operable to control the flow of electrical and
mechanical power between the engine, the first and the second
electric motors, and the one or more wheels;
wherein the controller is operable to operate the engine
when torque required from the engine to propel the hybrid
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vehicle and/or to drive one or more of the first or the second
motors to charge the battery is at least equal to a setpoint (SP)
above which the torque produced by the engine is efficiently
produced, and wherein the torque produced by the engine when
operated at the SP is substantially less than the maximum
torque output (MTO) of the engine.

Ex. 1001, 58:2–27 (emphasis added).
C. The Decision to Institute
In the preliminary proceeding, we instituted inter partes review on a
single ground, determining Ford had shown a “reasonable likelihood” that
claims 1, 14, 16, 18, and 24 are unpatentable as obvious over Severinsky,4
Field,5 and SAE 1996.6 Dec. Inst. 9–12. We now decide whether Ford has
proven the unpatentability of these claims by a “preponderance of the
evidence.” 35 U.S.C. § 316(e).
III. ANALYSIS
A. 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). This standard involves
determining the ordinary and customary meaning of the claim terms as
understood by one of ordinary skill in the art reading the patent’s entire
written disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.

4 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1003, “Severinsky”).
5 PCT Int’l Pub. WO 93/23263 Nov. 25, 1993 (Ex. 1039, “Field”).
6 Kozo Yamaguchi et al., Development of a New Hybrid System – Dual
System, SAE SPECIAL PUBLICATION SP-1156, pub. Feb. 1996 (Ex. 1025,
“SAE 1996”).
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Cir. 2007). Here, our review centers on the construction of two claim
terms—“road load (RL)” and “setpoint (SP).”7
1. “Road load” or “RL”
The term “road load” or “RL” does not appear in independent claim 1,
but is found in dependent claims 16, 18, and 24. Both Ford and Paice agree
that “road load” means the instantaneous torque required to propel the
vehicle. Pet. 13–14; PO Resp. 2, 15. That proposed construction comports
with the specification, which defines “road load” as “the vehicle’s
instantaneous torque demands, i.e., that amount of torque required to propel
the vehicle at a desired speed.” Ex. 1001, 12:42–46.
In further defining road load, the specification also notes that “the
operator’s depressing the accelerator pedal signifies an increase in desired
speed, i.e., an increase in road load, while reducing the pressure on the
accelerator or depressing the brake pedal signifies a desired reduction in
vehicle speed, indicating that the torque being supplied is to be reduced or
should be negative.” Id. at 12:46–55 (emphases added). As such, the
specification provides that road load “can be positive or negative.” Id. at
12:55–58. Thus, consistent with the specification, we construe “road load”
or “RL” as “the amount of instantaneous torque required to propel the
vehicle, be it positive or negative.”
2. “Setpoint” or “SP”
The term “setpoint” or “SP” is found in independent claim 1, as well
as dependent claims 14, 16, and 18. Ford proposes that “setpoint” be

7 Although Ford also proposes a construction for the terms “low-load mode
I,” “highway cruising mode IV,” and “acceleration mode V” (Pet. 17), those
terms are defined expressly by claim 16. Ex. 1001, 59:21–34. As such, they
do not require further construction.
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construed, in the context of the claims, as a “predetermined torque value.”
Pet. 14, 17. In that regard, Ford correctly notes that the claims compare the
setpoint against a torque value. Id. at 16. For example, claim 1 speaks of
the “setpoint” or “SP” as being the lower limit at which the engine can
produce torque efficiently, i.e., “when torque required from the engine to
propel the vehicle . . . is at least equal to a setpoint (SP) above which the
torque produced by the engine is efficiently produced.”8 Ex. 1001, 58:19–
27. Similarly, claim 14 recites that “the SP is at least approximately 30% of
the MTO of the engine,” where MTO stands for maximum torque output.
Id. at 59:9–10. This express language suggests that “setpoint” is not just any
value, but a value that—per the surrounding claim language—equates to
“torque.” See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)
(en banc) (“the claims themselves provide substantial guidance as to the
meaning of particular claim terms . . . the context in which a term is used in
the asserted claim can be highly instructive”).
Paice, on the other hand, argues that “setpoint” is synonymous with a
“transition” point, not a torque value. PO Resp. 7–10. Citing the
specification, Paice urges that “setpoint” must be construed to indicate a
point “at which a transition between operating modes may occur.” Id. at 8.
Paice’s argument is misplaced. While Paice is correct that sometimes the
specification describes the setpoint in terms of a “transition point” (see id. at
9–10), the claim language itself makes clear that setpoint relates simply to a
torque value, without requiring that it be a transition point. Indeed, the

8 Paice’s declarant, Mr. Neil Hannemann, agreed that, given the
“comparison” being made by this claim language, the “most
straightforward” construction is that “setpoint is a torque value.” Ex. 1041,
79:16–80:25.
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specification acknowledges that the mode of operation does not always
transition, or switch, at the setpoint, but instead depends on a number of
parameters. For instance,
the values of the sensed parameters in response to which the
operating mode is selected may vary . . . , so that the operating
mode is not repetitively switched simply because one of the
sensed parameters fluctuates around a defined setpoint.

Ex. 1001, 19:67–20:6 (emphasis added). That disclosure suggests that a
transition does not spring simply from the recitation of “setpoint.” As such,
we will not import into the meaning of “setpoint” an extraneous limitation
that is supported by neither the claim language nor the specification.
Moreover, that a “setpoint” does not mean a per se transition between
operating modes is reinforced by the fact that only the dependent claims, for
example, claims 6 and 19, describe the “setpoint” in terms of a “transition”
between operating modes. See id. at 58:41–49, 59:52–55. Where the
meaning of a claim term is clear from the context of its use in an
independent claim, we will not further limit the meaning of the term by its
use in a dependent claim, absent justification for doing so. See Phillips, 415
F.3d at 1315 (“the presence of a dependent claim that adds a particular
limitation gives rise to a presumption that the limitation in question is not
present in the independent claim”). Thus, we reject Paice’s attempt to
further limit the meaning of setpoint to a transition between operating
modes.
We also regard as meaningful that nothing in the specification
precludes a setpoint from being reset, after it has been set. The specification
states that the value of a setpoint may be “reset . . . in response to a repetitive
driving pattern.” Ex. 1001, 40:37–59. But, just because a setpoint may be
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reset under certain circumstances does not foreclose it from being “set,” or
“fixed,” at some point in time.9 A setpoint for however short a period of
time still is a setpoint. Thus, we construe “setpoint” as a “predetermined
torque value that may or may not be reset.”
Finally, Paice argues that any construction limiting the meaning of
setpoint to a “torque value” would be “directly at odds with the construction
adopted by two district courts” in related litigation.10 PO Resp. 6–7.
Although, generally, we construe claim terms under a different standard than
a district court, and thus, are not bound by a district court’s prior
construction, Paice’s emphasis on the district court’s construction compels
us to address it. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1327
(Fed. Cir. 2015) (“Given that [patent owner’s] principal argument to the
board . . . was expressly tied to the district court’s claim construction, we
think that the board had an obligation, in these circumstances, to evaluate
that construction”).
In that regard, the district court held:
there is nothing in the claims or specification that indicate a
given setpoint value is actually represented in terms of torque.
In fact, the specification clearly indicates that the state of
charge of the battery bank, ‘expressed as a percentage of its full
charge’ is compared against setpoints, the result of the
comparison being used to control the mode of the vehicle.

9 The definition of “set” is “determined . . . premeditated . . . fixed . . .
prescribed, specified . . . built-in . . . settled.” Merriam-Webster’s Collegiate
Dictionary (10th ed. 2000). Ex. 3001.
10 Paice LLC v. Toyota Motor Corp., No. 2:07-cv-00180, Dkt. 63 (E.D. Tex.
Dec. 5, 2008); Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499, 2014
WL 3725652 (D. Md. July 24, 2014).

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Ex. 1011, 10, 18. But, as discussed above, although claims are read in light
of the specification, it is the use of the term “setpoint” within the context of
the claims themselves that provides a firm basis for our construction. See
Phillips, supra. Here, the claims instruct us that “setpoint,” when read in the
context of the surrounding language, is limited to a torque value. As for the
district court’s statement that the battery’s state of the charge is compared to
a setpoint, we note that the claims actually speak of comparing the “state of
charge of the battery” to “a predetermined level,” not a “setpoint” or “SP” as
found elsewhere in the claims. See, e.g., Ex. 1001, 59:40–43 (dependent
claim 18). Thus, in the context of the claims, we decline to read “setpoint”
as also encompassing a state of charge of the battery, as the district court
did. Instead, we construe “setpoint” as representing a torque-based value.
B. The Instituted Ground—Obviousness over Severinsky, Field, and SAE
Ford challenges independent claim 1, as well as dependent claims 14,
16, 18, and 24, on the ground that the claimed invention would have been
obvious over the combined teachings of Severinsky, Field, and SAE.
Pet. 18–49. In challenging these claims, Ford relies primarily on Severinsky
as teaching the hybrid configuration and control strategy of the contested
claims.11 See Pet. 25–27, 30–46, 48–49.
At the outset, we find that, like claims 1 and 16, Severinsky discloses
the essential components of a hybrid vehicle, including (1) an internal
combustion engine that provides propulsive torque to the wheels of the
vehicle, (2) an electric motor that is also capable of providing propulsive
torque to the wheels, (3) a battery that provides electrical current to the
motor, and (4) a controller, or microprocessor, that determines the vehicle’s

11 Paice does not dispute that Severinsky is prior art against the ’634 patent.
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mode of operation, i.e., an all-electric mode, an engine-only mode, or a
hybrid mode, by controlling the flow of torque between the engine, motor,
and wheels of the vehicle. Compare Ex. 1003, Fig. 3 (Severinsky), with Ex.
1001, Fig. 4 (the ’634 patent).
What Severinsky lacks is the two-motor configuration of claim 1.
Pet. 27. For that teaching, Ford relies on the common knowledge of skilled
artisans at the time of the claimed invention, as documented by SAE and
Field. Id. at 18–25, 27–30. Noting that Severinsky discloses only a single
electric motor that acts as both a generator and a traction motor, Ford points
to the automotive industry’s prior history of “two-motor” hybrid designs for
increased efficiency in urban city driving as evidence that equipping
Severinsky with a separate generator motor in order to perform
“simultaneous dual-motor operability” would have been an obvious design
modification in the eyes of skilled artisans. Id. at 21–25; see also Ex. 1005
¶¶ 168–201 (describing the state-of-the-art of two-motor hybrid
architectures).
As further evidence, Ford relies on SAE 1996 and Field as teaching
expressly the use of dual electric motors in a hybrid vehicle for purposes of
providing simultaneous propulsion and charging functions. See Pet. 27–30
(discussing Exs. 1025, 1039). We credit the testimony of Ford’s declarant,
Dr. Davis, that a skilled artisan would have known (and been able) to modify
the “one motor” hybrid vehicle of Severinsky to add a separate generator
motor, either as a matter of design choice or as taught by SAE 1996 and
Field, so as to gain the known advantage of increased efficiency and range
that two-motor hybrid designs provide in urban city driving. Ex. 1005
¶¶ 213–220.
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In the face of the combined teachings of Severinsky, SAE 1996, and
Field, Paice raises a multitude of arguments, which we address in turn. PO
Resp. 12–60.
1. Claims 1 and 16
Central to our analysis of claims 1 and 16 are the limitations directed
to the “setpoint,” or “SP,” at which the controller operates the engine to
propel the vehicle. Specifically, claim 1 recites that the controller operates
the engine “when torque required from the engine to propel the hybrid
vehicle . . . is at least equal to a setpoint (SP) above which the torque
produced by the engine is efficiently produced.” Ex. 1001, 58:22–24. And,
claim 16 adds that “when the SP