Ford Motor Companyv.Paice LLC

Patent Trial and Appeal Board

Mar 10, 2016

11229762 (P.T.A.B. Mar. 10, 2016)

Trials@uspto.gov Paper 26
571-272-7822 Entered: March 10, 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 IPR2014-01416
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
Paice LLC and The Abell Foundation, Inc. (collectively, “Paice”) are
the owners of U.S. Patent No. 7,237,634 B2 (“the ’634 patent”). Ford Motor
Company (“Ford”) filed a Petition (“Pet.”) for inter partes review of the
’634 patent, challenging the patentability of claims 80, 93, 98, 99, 102, 109,
114, 127, 131, 132, 135, 139, 142, 161, 215, 228, 232, 233, and 235–237
under 35 U.S.C. § 103. In a preliminary proceeding, we instituted trial
because Ford demonstrated a reasonable likelihood that it would prevail in
proving unpatentability of the challenged claims. Once trial was instituted,
Paice filed a Patent Owner Response (“PO Resp.”), and Ford followed with
a Reply (“Reply”). The parties waived oral argument, choosing instead to
rely on arguments presented during a prior, consolidated hearing conducted
in several related proceedings, namely, IPR2014-000570, -00571, -00579,
-00875, -00884, and -00904.1 Pursuant to our jurisdiction under 35 U.S.C.
§ 6(c), we conclude that Ford has proven, by a preponderance of the
evidence, that the challenged claims are unpatentable.
II. BACKGROUND
A. Related Cases
The ’634 patent was previously the subject of a final written decision
in IPR2014-00904. That prior proceeding, however, involved different
claims and grounds than the instant proceeding. Specifically, the -00904
proceeding resulted in a final determination that claims 1, 14, 16, 18, and 24
of the ’634 patent are unpatentable under 35 U.S.C. § 103. 2015 WL
8536745 (PTAB Dec. 10, 2015). We granted institution of trial in the

1 Transcripts have been entered into the record in those earlier proceedings.
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instant proceeding in March 2015, well before our final written decision in
the -00904 proceeding.
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. 1–2; PO Resp. 3 (referencing the district
courts’ claim constructions).
B. The ’634 Patent
The ’634 patent describes a hybrid vehicle with an internal
combustion engine, an electric motor, and a battery bank, all controlled by a
microprocessor that controls the direction of torque transfer between the
engine, motor, and drive wheels of the vehicle. Ex. 1101, 17:17–56, Fig. 4.
The microprocessor monitors the vehicle’s instantaneous torque
requirements, also known as “road load (RL),” to determine whether the
engine, the electric motor, or both, will be used as a source to propel to
propel the vehicle. Id. at 11:63–65. Aptly, the ’634 patent describes the
vehicle’s various modes of operation in terms of an engine-only mode, an
all-electric mode, or a hybrid mode. Id. at 35:63–36:55, 37:24–38:8.
As summarized in the ’634 patent, 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.”2 Id. at 17:40–45. “[T]he
microprocessor can effectively determine the road load by monitoring the

2 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. 1101,
13:39–42.
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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 (SP)” and uses the results of the comparison
to determine the vehicle’s mode of operation. Id. at 40:16–49. The
microprocessor utilizes a hybrid 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
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”). Other operating parameters may
also play a role in the microprocessor’s choice of 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, a microprocessor control strategy that operates the engine
in a range above the setpoint (SP), but substantially less than the maximum
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torque output (MTO), maximizes fuel efficiency and reduces pollutant
emissions of the hybrid vehicle. Id. at 15:55–58.
B. The Challenged Claims
Of the challenged claims, claims 80, 114, 161, and 215 are
independent. Claim 161 is illustrative:
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 a
setpoint (SP);

operating at least one first electric motor to propel the
hybrid vehicle when the RL required to do so is less than 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;
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 first 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;

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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. 1101, 73:41–74:9 (emphases added).
C. The Instituted Grounds
In the preliminary proceeding, we instituted trial because Ford made a
threshold showing of a “reasonable likelihood” that:
(1) claims 161, 215, 228, 232, 233, 237 are either
anticipated by, or would have been obvious over, Severinsky3;

(2) claims 80, 93, 98, 99, 102, 109, 114, 127, 131, 132,
135, 139, 142 would have been obvious over Severinsky and
Frank4; and

(3) claims 215, 228, 233, 235, 236 would have been
obvious over Tabata.5

Dec. to Inst. 10–11. We now decide whether Ford has proven the
unpatentability of these same 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). Here, Ford proposes a
construction for several claim terms, including “road load,” “setpoint,”
“low-load mode I,” “highway cruising mode IV,” and “acceleration mode

3 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1103, “Severinsky”).
4 U.S. Patent No. 5,824,534, iss. Dec. 1, 1998 (Ex. 1104, “Frank”).
5 U.S. Patent No. 5,841,201, iss. Nov. 24, 1998 (Ex. 1105, “Tabata”).
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V.” Pet. 11–15. Our review centers on the construction of two claim
terms—“road load (RL)” and “setpoint (SP).”6
1. “Road load” or “RL”
The term “road load” or “RL” appears in each of the independent
claims at issue here. Ford proposes that “road load” means the instantaneous
torque required for propulsion of the vehicle. Pet. 11–12. Paice agrees with
that construction. PO Resp. 10; Ex. 1148, 39:14–17. And, the parties’
proposed construction appears to comport 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.
1101, 12:44–46. In further defining “road load,” the specification 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 12:50–61 (emphases added). As such, the specification states 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.”

6 Ford also proposes a construction for the terms “low-load mode I,”
“highway cruising mode IV,” and “acceleration mode V.” Pet. 14. Paice is
silent on any construction for these terms. We determine that, for purposes
of our review, no further construction is necessary aside from the way those
terms are defined in claims 99, 133, 161, and 233.
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2. “Setpoint” or “SP”
The term “setpoint” or “SP” is found in each of the independent
claims at issue. Ford proposes that “setpoint” be construed, in the context of
the claims, as a “predetermined torque value.” Pet. 13–14. In that regard,
Ford correctly notes that the claims compare the setpoint against “a torque-
based road load value.” Id. at 13. For example, each of the challenged
independent claims speak of the “setpoint” or “SP” as being the lower limit
at which the engine can produce torque efficiently, i.e., operating the engine
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.”7 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) (“[T]he claims
themselves provide substantial guidance as to the meaning of particular
claim terms . . . [T]he 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. 3–6. 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 3,
6. 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

7 Paice’s declarant, Mr. Neil Hannemann, similarly testified that under the
“most straightforward” approach for the claimed “comparison,” the “setpoint
is a torque value.” Ex. 1149, 79:16–80:25.
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4–5), the claim language itself makes clear that setpoint relates simply to a
torque value, without requiring that it be a transition point. Indeed, the
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. 1101, 19:67–20:6 (emphasis added). That disclosure suggests that a
transition does not spring simply from the recitation of “setpoint.” Thus, we
will not import into the meaning of “setpoint” an extraneous limitation that
is supported by neither the claim language nor the specification. As such,
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. 1101, 40:50– 64. But, just because a setpoint may be
reset under certain circumstances does not foreclose it from being “set,” or
“fixed,” at some point in time.8 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.”

8 The definition of “set” is “determined . . . premeditated . . . fixed . . .
prescribed, specified . . . built-in . . . settled.” Merriam-Webster’s Collegiate
Dictionary (10th ed. 2000).
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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.9 PO Resp. 3. 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.

Ex. 1113, 13, 21. 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

9 Paice LLC v. Toyota Motor Corp., No. 2:07-cv-00180, 2008 WL 6822398
(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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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. 1101, 67:36–38 (dependent
claim 101), 70:54–56 (dependent claim 134). 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. Ground 1—Anticipation by, and Obviousness Over, Severinsky
1. Independent Claims 161 and 215
Ford challenges independent claims 161 and 215 on the ground that
the claimed invention is anticipated by Severinsky.10 Pet. 16–27, 36–39;
Reply 10–15. To the extent that Severinsky does not anticipate the
challenged claims, Ford argues that the claimed invention would have been
obvious in view of the teachings of Severinsky and the knowledge of skilled
artisans in the relevant time frame. Id. at 16.
Claims 161 and 215 are directed to a “method for controlling a hybrid
vehicle.” The claims recite various “operating modes” for the vehicle, in
which either an “electric motor,” or an “internal combustion engine,” or
“both,” are selected to propel the vehicle. Ex. 1101, 73:41–67, 79:10–27.
Claim 161 describes these three modes as a “low-load” mode, a “high-way
cruising” mode, and an “acceleration” mode, respectively. Id. at 73:49–
74:3. Claim 215 adds a battery “charging” mode to the mix. Id. at 79:28–
31.
At the outset, we find that, like claims 161 and 215, Severinsky
discloses the basic components of a hybrid vehicle, including (1) an internal

10 Paice does not dispute that Severinsky is prior art against the ’634 patent.
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combustion engine that provides propulsive torque to the wheels of the
vehicle, (2) an electric motor that also is capable of providing propulsive
torque to the wheels, and (3) a “battery” that provides electrical current to
the motor. Compare Ex. 1003, Fig. 3 (Severinsky) with Ex. 1101, Fig. 4
(the ’634 patent). More significantly, Severinsky discloses “controlling the
relative contributions of the internal combustion engine and electric motor”
so that the hybrid vehicle “may be operated in a variety of operating modes
selected dependent on desired vehicle performance.” Ex. 1103, 22:19–39
(emphasis added). Those modes, according to Severinsky, include:
“a low speed/reversing mode, wherein all energy is supplied by
said battery and all torque by said electric motor”;

“a high speed/cruising mode, wherein all energy is supplied by
combustible fuel and all torque by said engine”; and

“an acceleration/hill climbing mode, wherein energy is supplied
by both combustible fuel and said battery, and torque by both
said engine and said motor.”

Ex. 1103, 22:39–50; see also id. at 10:24–11:6 (describing each mode in
greater detail). We find that those disclosures in Severinsky meet the
general configuration of the operating modes required by claims 161 and
215.
Claims 161 and 215 also require operating the engine when the torque
required to propel the vehicle reaches a “setpoint” or “SP” so that the engine
produces torque “efficiently.” Ex. 1101, 73:55–60 (claim 161), 79:18–24
(claim 215). Severinsky discloses that the engine is operated only when it is
“efficient” to do so, and if not, the motor is used:
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the internal combustion engine is operated only under the most
efficient conditions of output power[11] and speed. When the
engine can be used efficiently to drive the vehicle forward, e.g.
in highway cruising, it is so employed. Under other
circumstances, e.g. in traffic, the electric motor alone drives the
vehicle forward and the internal combustion engine is used only
to charge the batteries as needed.

Ex. 1103, 7:8–16 (emphasis added); see also id. at 9:40–52 (“the internal
combustion engine operates only in its most efficient operating range”).
Paice does not appear to dispute that Severinsky teaches operating the
engine when it is efficient to do so. PO Resp. 8 (“Severinsky and the ’634
patent may have the same goal (efficient engine operation)”). Thus, we find
that Severinsky, like the claims, discloses operating the engine when it can
produce torque efficiently.
With respect to the claimed “setpoint” for achieving such efficiency,
Severinsky teaches that the microprocessor runs the engine “only in the near
vicinity of its most efficient operational point, that is, such that it produces
60–90% of its maximum torque whenever operated.” Id. at 20:63–66
(emphasis added). Ford’s declarant, Dr. Gregory Davis, testifies that a
skilled artisan would have understood the lower limit of Severinsky’s range,
i.e., 60% of maximum torque, to be a “setpoint” for efficient operation of the
engine. Ex. 1107 ¶ 208. Dr. Davis further testifies that Severinsky’s lower
limit of 60% is “substantially less than the MTO” of the engine, thereby

11 Paice’s declarant, Mr. Hannemann, testified that a skilled artisan would
have understood that “power is a product of torque and speed.” Ex. 1149,
31:6–13 (emphasis added); see also Ex. 2104 ¶ 36 (“For every engine speed,
there is an associated torque value. Another way of defining an engine’s
operating range would be by its output power, which is the engine’s speed
multiplied by the output torque”) (emphases added).
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meeting the language of claims 161 and 215. Id. ¶¶ 231–232. Crediting the
testimony of Dr. Davis, we are persuaded that Severinsky discloses, or at the
very least suggests, the “setpoint” limitations of claims 161 and 215. See id.
¶¶ 183–212, 223–232, 323–326.
Faced with the explicit teachings of Severinsky, Paice raises a number
of arguments, none of which we find persuasive. See PO Resp. 7–16, 49–
50. First, Paice argues repeatedly that Severinsky fails to teach the claimed
setpoint because Severinsky determines when to turn the engine on “based
on the speed of the vehicle,” and “not road load” as required by the claims.
Id. at 7, 17, 25–38, 45. Although Paice acknowledges that “Severinsky
clearly teaches ‘mode switching’,” it nonetheless maintains that Severinsky
“only discloses speed and not load as the control metric.” Id. at 19
(emphasis added).
Paice would have us believe that “speed” is the sole factor used by
Severinsky in determining when to employ the engine. That is not the case.
Severinsky makes clear that the controller uses the “load” requirements of
the vehicle in determining when to run the engine. Importantly, Severinsky
discloses that
at all times the microprocessor 48 may determine the load (if
any) to be provided to the engine by the motor, responsive to
the load imposed by the vehicle’s propulsion requirements, so
that the engine 40 can be operated in its most fuel efficient
operating range.

Ex. 1103, 17:11–15 (emphases added). We are not persuaded by Paice’s
focus on Severinsky’s disclosure of “speed,” when Severinsky plainly
teaches using “load” for determining the engine’s “most fuel efficient
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operating range.” It is the totality of Severinsky that must be assessed, not
its individual parts.
Although it may not use the term “road load” per se, Severinsky
describes operation of the engine in terms similar to our construction of
“road load,” and uses language much like the claims. For example, just as
claims 161 and 215 describe the engine as being operated in response to
“instantaneous road load (RL) required to propel the hybrid vehicle,” so too
does Severinsky describe operating the engine in response to “the load
imposed by the vehicle’s propulsion requirements.” Id. The similarity of
those descriptions provides ample support for finding that Severinsky
teaches an engine control strategy that depends on the load, or torque,
required to propel the vehicle, as called for by the claims.
Moreover, Severinsky teaches elsewhere that efficient operation of the
engine is based on torque, not speed. In particular, Severinsky specifies that
the microprocessor runs the engine at an “operational point” at which “it
produces 60–90% of its maximum torque.” Id. at 20:63–67 (emphasis
added). That disclosure by Severinsky is no different than the way in which
the ’634 patent claims the “setpoint.” For instance, claim 232, which
depends from claim 215, recites that the setpoint is “approximately 30% of
the MTO” of the engine. Ex. 1101, 80:62–63. Just as the claimed setpoint is
expressed in terms of a percentage of maximum torque, so too is
Severinsky’s “operational point,” which is described as “60–90% of its
maximum torque.” That Severinsky describes the engine’s operational point
in terms similar to, if not the same as, the claimed setpoint, i.e., a percentage
of maximum torque, runs counter to Paice’s argument that Severinsky
employs the engine based on speed alone.
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Paice cites a number of passages in Severinsky that purportedly
evince a control strategy that is based on speed, as opposed to torque or load.
PO Resp. 7, 21, 45. We do not find the cited passages supportive of Paice’s
argument. For example, Paice accuses Ford of “glossing over” Severinsky’s
disclosure of turning the engine off during “low speed” or “traffic”
situations, and turning it on during “moderate speed” or “highway cruising”
situations. Id. at 7–8. Those disclosures, however, do not foreclose
Severinsky from teaching that “load” or “torque” requirements are a
determinative factor of when to employ the engine. In other words, torque
and speed are not mutually exclusive concepts.12 Indeed, the ’634 patent
itself speaks of “speed” when describing the vehicle’s various operating
modes, stating that “the traction motor provides torque to propel the vehicle
in low-speed situations” and “[d]uring substantially steady-state operation,
e.g., during highway cruising, the control system operates the engine.” Ex.
1101, 17:47–48, 19:45–46, respectively (emphasis added). Thus, just as
“speed” plays a role in the control strategy of the ’634 patent, so too does it
in Severinsky.
Paice also points to Severinsky’s disclosure of “speed-responsive
hysteresis” and argues repeatedly that it depicts a control strategy “based on
speed, not road load.” PO Resp. 7, 17–19, 22, 25. According to Paice, “[i]t
simply makes no sense for Severinsky to use ‘speed responsive-hysteresis’ if
Severinsky uses road load to control engine starts and stops.” Id. at 25. But
Severinsky only discusses the hysteresis feature as “speed-responsive”
because it is used to avoid cycling the engine on and off in “low-speed”
situations where engine speed dips to “20-25 mph” while in a highway

12 See supra n.11.
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mode. Ex. 1103, 18:23–42. That discussion of low-speed hysteresis is
essentially the same as the description of hysteresis in the ’634 patent, which
discloses that “excessive mode switching otherwise likely to be encountered
in suburban traffic can be largely avoided [by] implementing this ‘low-speed
hysteresis’.” Ex. 1101, 43:67–44:3. In any event, that Severinsky may teach
an additional hysteresis feature as a way of controlling unintended engine
starts during temporary dips in speed does not preclude Severinsky from also
teaching the use of a torque value, or road load, as a way to determine when
to employ the engine in the first instance. We find persuasive the testimony
of Ford’s declarant, Dr. Davis, confirming that “[e]ven if Severinsky ’970
was considering speed in this particular situation [of nuisance engine starts],
it is generally, if not always, using torque/road load in its mode decisions.”
Ex. 1147 ¶ 20.
Generally speaking, Paice is attempting to hold Severinsky to a
different standard than it holds the claimed invention. That Severinsky may
discuss “speed” as one of the parameters used by the microprocessor does
not negate its overall, and express, teaching of employing the engine
“responsive to the load imposed by the vehicle’s propulsion requirements,”
or road load, “so that the engine [] can be operated in its most fuel efficient
operating range.” Ex. 1103, 17:11–15. Thus, we reject Paice’s arguments
that criticize Severinsky’s references to “speed,” when the ’634 patent itself
recognizes that “speed” plays a role in a road load-responsive hybrid control
strategy.13

13 Even claims 12 and 300 of the ’634 patent acknowledge that “the
controller is operable to vary the SP as a function of speed of the engine.”
Ex. 1101, 59:3–5, 89:51–52 (emphasis added).
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Paice also faults Severinsky for disclosing that “the microprocessor
receives inputs from the driver.” PO Resp. 26 n.8. But, once again, Paice
fails to recognize that the claims at issue expressly call for receiving inputs
from the driver as part of the engine control strategy. For instance, claim
161 recites: “receiving operator input specifying a change in required torque
to be applied to the wheels of the hybrid vehicle.” Ex. 1101, 74:4–5. The
’634 patent explains that the “operator input” includes the position of the
accelerator and brake pedals, which is then used “to properly control
operation of the vehicle.” Id. at 27:26–46. Severinsky discloses the same
type of input: “a controller adapted to receive input commands from a driver
. . . to control operation of said controllable torque transfer unit.” Ex. 1103,
24:60–63. Given that claim 161 requires operator input (such as pedal
position) as part of the claimed method, we are not persuaded by Paice’s
attack on Severinsky for teaching a control strategy that relies on the same
input.
In the end, we are not persuaded by Paice’s arguments that Severinsky
does not anticipate, or render obvious, the claimed “setpoint.” PO Resp. 7–
38, 44–50. Rather, we credit the testimony of Ford’s declarant, Dr. Davis,
that a skilled artisan would have understood the lower limit of Severinsky’s
range—60% of MTO—to be a predetermined setpoint that is based on
torque. See Ex. 1107 ¶¶ 203–212. Thus, we find that Severinsky fulfills the
claimed criteria of comparing the torque required to propel the vehicle, or
road load, to a “setpoint,” including operating the engine “to efficiently
produce torque above the SP, and wherein the SP is substantially less than
the MTO.”
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2. The Dependent Claims
Paice does not argue dependent claims 228, 232, 233, and 237
separately from independent claim 215. After considering Ford’s analysis,
which we adopt as our own, we are persuaded that Severinsky discloses or
suggests each of the limitations of these dependent claims. See Pet. 27–36.
For example, with respect to claim 228, Severinsky discloses that either the
engine or the motor can be operated in a “battery charge mode . . .
responsive to monitoring the state of charge of battery.” Ex. 1103, 15:1–10,
16:67–17:15. As to claim 232, Severinsky’s lower limit of 60% appears to
fall within the claimed range that the setpoint be greater than “at least
approximately 30% of the MTO of the engine.” Ex. 1107 ¶¶ 272–274. And,
with respect to claim 237, Severinsky discloses a “two-way clutch” that
“controllabl[y]” couples the engine to the drive wheels of the vehicle. Ex.
1103, 9:58–61, Figs. 3, 11.
3. Conclusion
After considering the evidence and arguments presented at trial, we
find that Severinsky discloses, and at the very least suggests, each and every
limitation of independent claims 161 and 215, as well as dependent claims
228, 232, 233, and 237. As such, we conclude that a preponderance of the
evidence establishes that these claims are anticipated by, and would have
been obvious over, Severinsky.
C. Ground 2—Claims 80, 93, 98, 99, 102, 109, 114, 127, 131, 132, 135,
139, and 142—Obviousness Over Severinsky and Frank

Ford argues that independent claims 80 and 114, as well as dependent
claims 93, 98, 99, 102, 109 127, 131, 132, 135, 139, and 142, would have
been obvious over Severinsky and Frank. Pet. 39–48; Reply 15–18. Claims
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80 and 114 require operating the engine when the torque required to propel
the vehicle is “above the SP” and “substantially less than the MTO,” which
we previously found is present in Severinsky. See Section B. above. Claim
80 includes the additional limitation that the torque required to propel the
vehicle, or road load (RL), be above the setpoint “for at least a
predetermined time” before operating the engine. Ex. 1101, 65:26–28.
Claim 114 includes a similar requirement. Id. at 68:43–45. The ’634 patent
describes this time-delay step as “hysteresis in the mode-switching
determination” for preventing undesirable and repetitive engine starts during
certain types of driving. Id. at 41:30–47.
Severinsky expressly contemplates “hysteresis in mode switching.”
Ex. 1103, 18:34–42. More specifically, Severinsky states:
At moderate speeds, as experienced in suburban driving, the
speed of the vehicle on average is between 30–45 mph. The
vehicle will operate in a highway mode with the engine running
constantly after the vehicle reaches a speed of 30–35 mph. The
engine will continue to run unless the engine speed is reduced
to 20–25 mph for a period of time, typically 2–3 minutes. This
speed responsive hysteresis in mode switching will eliminate
nuisance engine starts.

Ex. 1103, 18:34–42 (emphasis added). Hysteresis, in that context, evidently
means a time delay that depends on the engine running at a steady state for
2–3 minutes already before switching modes.
And, likewise, Ford points to Frank as confirming it was well known
to utilize a “time delay” with an on-off “threshold,” or setpoint, of an engine
in a hybrid vehicle to reduce excessive cycling of the engine being turned on
and off repetitively. Pet. 42–43 (citing Ex. 1104, 8:4–11). Ford also cites to
Frank for teaching the use of a second on-off setpoint, slightly offset from a
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first setpoint, as the actual trigger for controlling undesirable excessive
cycling of the engine. Id. When viewed through the eyes of the skilled
artisan, Severinsky and Frank evidently teach a time-delay in conjunction
with a setpoint for operating the engine in order to reduce undesirable
excessive cycling in switching between different operational modes. Each
of claims 80 and 114 requires such a time delay for the triggering condition
when “the RL>the SP.”
That Severinsky also may disclose this “hysteresis” time-delay as
being “speed-responsive” does not negate or detract from its overall teaching
of applying a time delay to an on-off setpoint to prevent frequent cycling
between the engine and motor in a hybrid vehicle. Ex. 1107 ¶ 363, Ex. 1147
¶ 20. Indeed, Ford’s declarant, Dr. Davis, explains that “[t]ime-delays or
additional thresholds were frequently employed in traditional transmissions
in order to prevent excessive cycling between gears.” Ex. 1107 ¶ 374. Dr.
Davis also confirms that “[a] person of ordinary skill in the art would have
been familiar with these techniques” for preventing unwanted cycling effects
“when the vehicle operation hovers around a particular setpoint.” Id.
With that background in mind, we credit the testimony of Dr. Davis
that a skilled artisan would have been led to incorporate Frank’s time-delay
feature with Severinsky’s engine control strategy because both hybrid
strategies utilize a threshold, or “setpoint,” for switching the engine on and
off. Ex. 1107 ¶¶ 373–377. Also, we are not persuaded by Paice’s
contention that the proposed combination would result in a “speed-
responsive hysteresis.” PO Resp. 7, 18, 22, 24. As discussed above,
Severinsky’s setpoint already accounts for a torque value and is already
available for use with a time-delay feature, such as that taught by Frank. Ex.
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1107 ¶¶ 366–370. Thus, we find that Severinsky’s disclosure of a torque-
based setpoint for starting and stopping the engine, when combined with
Frank’s teaching of a time-delay with an on-off threshold for an engine,
would have suggested to a skilled artisan the features of claims 80 and 114.
See Pet. 39–42, 45–47.
Paice does not argue dependent claims 93, 98, 99, 102, 109, 127, 131,
132, 135, 139, and 142 separately from their respective independent claims.
After considering Ford’s analysis, which we adopt as our own, we are
persuaded that Severinsky discloses the features recited in the claims
depending from claims 80 and 114, for example, a battery charge mode
(claim 93, 127, 139), a setpoint of at least 30% of MTO (claims 98, 131),
and a clutch (claims 109, 142). See Pet. 43–48. In sum, we conclude that
Ford has demonstrated, by a preponderance of the evidence, that claims 80,
93, 98, 99, 102, 109, 114, 127, 131, 132, 135, 139, and 142 would have been
unpatentable for obviousness over Severinsky and Frank.
D. Ground 3—Claims 215, 228, 233, 235, and 236—
Obviousness Over Tabata

In this ground, Ford again challenges claims 215, 228, and 233, only
now it asserts that they would have been obvious over Tabata. Pet. 48–58;
Reply 19–25. Ford also includes claims 235 and 236 as part of this
challenge. Id. As discussed above, claim 215 is independent and recites
operating modes for the vehicle that include either the electric motor, or the
engine, or both. And more significantly, claim 215 requires that the engine
be “operable to efficiently produce torque above the SP, and wherein the SP
is substantially less than the MTO.” Ex. 1101, 79:10–31.
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Tabata discloses a hybrid vehicle that operates in a plurality of modes,
including:
“Motor Drive” mode 1;
“Engine Drive” mode 2;
“Engine Drive & Charging” mode 3; and
“Engine-Motor Drive” mode 4.

Ex. 1105, 11:15–24, Fig. 15. Central to Tabata is a controller that executes a
hybrid control strategy so that the engine achieves “a maximum value of the
fuel consumption efficiency.” Id. at 13:65–67. As described, the engine is
operated when “the currently required output Pd is larger than the first
threshold P1 and smaller than the second threshold P2.” Id. at 33:30–32.
Ford’s declarant, Dr. Davis, explains that, as used in Tabata, the term
“Pd” means road load or RL, and the terms “P1” and “P2” constitute lower
and upper limits for efficient operation of the engine. Ex. 1107 ¶¶ 480–486.
Indeed, much like the claimed “setpoint,” Tabata discloses that both P1 and
P2 are determined “so as to minimize the exhaust gas emissions and the fuel
consumption, depending upon the energy efficiency during running of the
vehicle.” Ex. 1105, 30:59–62; 32:7–9. In other words, Tabata discloses that
the engine runs most efficiently when the road load is between a lower limit
(P1) and an upper limit (P2). And, as Dr. Davis further explains, Figure 7 of
Tabata illustrates that the engine operates in a “sweet spot” between lower
and upper limits P1 and P2, and that a skilled artisan would have recognized
the lower limit as a setpoint for operating the engine well below its MTO.
Ex. 1107 ¶¶ 487–496. We credit the testimony of Dr. Davis that Tabata’s
engine operates “efficiently” in a range “above the SP” and “substantially
less than the MTO,” as required by claim 215.
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Paice’s sole argument against Tabata is that it “uses demand power
. . . and compares that to power thresholds to determine the operational
mode of the vehicle.” Id. According to Paice, Tabata’s use of a “power”
demand as a threshold is “fundamentally different” from the “torque” or
“load” demand on which the claimed “setpoint” is based. Id. at 54, 57–58.
We disagree.
Although power and speed are different, Paice’s declarant, Mr.
Hannemann, testified that a skilled artisan would have understood that
“power is a product of torque and speed.” Ex. 1149, 31:6–13 (emphasis
added). Mr. Hannemann further explained that “[f]or every engine speed,
there is an associated torque value. Another way of defining an engine’s
operating range would be by its output power, which is the engine’s speed
multiplied by the output torque.” Ex. 2104 ¶ 36 (emphases added). Indeed,
Tabata itself recognizes this well-known relationship between power and
torque, stating that that the “required output Pd” may be calculated “on the
basis of the engine speed NE and engine torque TE.” Ex. 1105, 13:10–12;
see also id. at 13:53–64, 21:12–33, Fig. 7.
When questioned about Tabata’s disclosure of a power-based control
strategy vis-a-vis the claimed torque-based strategy, Mr. Hannemann
acknowledged there was no apparent advantage to using torque as opposed
to power as a setpoint for operating the engine. Ex. 1154, 39:23–40:6. The
only difference, he stated, might be the size of the engine and motor, but size
is not part of the claims, and thus, is irrelevant. Based on the close
mathematical relationship between power and torque, which was confirmed
by both parties’ declarants, we conclude that a skilled artisan would have
viewed Tabata as suggesting the setpoint feature of claim 215. As such,
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Ford has demonstrated by preponderant evidence that claim 215 is
unpatentable as obvious in view of Tabata.
Paice does not argue the challenged claims depending from claim 215.
After considering Ford’s analysis, which we adopt as our own, we are
persuaded that Tabata discloses the limitations of dependent claims 228,
233, 235, and 236. For instance, with respect to claim 228, Tabata illustrates
expressly that “SOC” (i.e., state of charge) of the battery is determined
before any modes of operation are executed. Ex. 1105, Fig. 15 (as depicted
in steps S12, S16, S18). Tabata further states that an integral part of the
hybrid control sub-routine is “to determine whether the amount of electric
energy SOC stored in the electric storage device [i.e., battery] is equal to or
larger than a predetermined upper limit.” Id. at 28:40–45. That disclosure
persuades us that Tabata meets the battery-charge monitoring step of claim
228. As for claims 235 and 236, Tabata expressly discloses a “continuously
variable transmission” equipped with “planetary gear sets.” Id. at 9:63–
10:27.
In sum, we conclude that Ford has demonstrated, by a preponderance
of the evidence, that claims 215, 228, 233, 235, and 236 are unpatentable for
obviousness over Tabata.
IV. CONCLUSION
After considering the parties’ arguments and evidence, we conclude
that Ford has demonstrated, by a preponderance of the evidence, that:
(1) claims 161, 215, 228, 232, 233, and 237 are
anticipated by Severinsky, or alternatively, would have been
rendered obvious by Severinsky;

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(2) claims 80, 93, 98, 99, 102, 109, 114, 127, 131, 132,
135, 139, and 142 would have been rendered obvious by
Severinsky and Frank; and

(3) claims 215, 228, 233, 235, and 236 would have been
rendered obvious in view of Tabata.

V. ORDER
Accordingly, it is hereby:
ORDERED that claims 80, 93, 98, 99, 102, 109, 114, 127, 131, 132,
135, 139, 142, 161, 215, 228, 232, 233, and 235–237 of the ’634 patent are
held unpatentable; and
FURTHER ORDERED that any party seeking judicial review of this
Final Written Decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.
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FOR PETITIONER:

Frank A. Angileri
John E. Nemazi
John P. Rondini
Erin K. Bowles
BROOKS KUSHMAN P.C.
FPGP010IPR1@brookskushman.com
jrondini@brookskushman.com

Lissi Mojica
Kevin Greenleaf
DENTONS US LLP
lissi.mojica@dentons.com
kevin.greenleaf@dentons.com
iptdocketchi@dentons.com

FOR PATENT OWNER:

Timothy W. Riffe
Kevin E. Greene
Ruffin B. Cordell
Linda L. Kordziel
Brian J. Livedalen
Daniel A. Tishman
FISH & RICHARDSON P.C.
rbc@fr.com
riffe@fr.com
greene@fr.com
IPR36351-0015IP1@fr.com