Ford Motor Companyv.Paice LLC

Patent Trial and Appeal Board

Sep 28, 2015

10382577 (P.T.A.B. Sep. 28, 2015)

Trials@uspto.gov Paper 44
571-272-7822 Entered: September 28, 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 IPR2014-00571
Patent 7,104,347 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, 6, 7, 9, 15, 21, 23, and 36 of U.S. Patent No. 7,104,347
B2 (“the ’347 patent”), which is owned by Paice LLC & The Abell
Foundation, Inc. (collectively, “Paice”). In a preliminary proceeding, we
determined a reasonable likelihood existed that the challenged claims are
unpatentable under 35 U.S.C. § 103, and instituted trial. In support of
patentability, Paice filed a Patent Owner Response (“PO Resp.”), and Ford
followed with a Reply (“Reply”). After hearing oral argument from both
parties,
1
and pursuant to our jurisdiction under 35 U.S.C. § 6(c), we
conclude Ford has proven, by a preponderance of the evidence, that all of the
challenged claims are unpatentable.
II. BACKGROUND
A. The ’347 patent
2

The ’347 patent describes a hybrid vehicle with an internal
combustion engine, two electric motors (a starter motor and a traction
motor), and a battery bank, all controlled by a microprocessor that directs
the transfer of torque from the engine and traction motor to the drive wheels
of the vehicle. Ex. 1001, 17:5–45, Fig. 4. The microprocessor features an
engine control strategy that runs the engine only under conditions of high
efficiency, typically when the vehicle’s instantaneous torque requirements
(i.e., the amount of torque required to propel the vehicle, or “road load”) is

1
A transcript (“Tr.”) has been entered into the record. Paper 49.
2
The ’347 patent is also the subject of several co-pending cases, including
Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md.), filed Feb. 19,
2014 (Pet. 1), and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
(D. Md.), filed Feb. 16, 2012 (PO Resp. 6).
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at least equal to 30% of the engine’s maximum torque output (“MTO”)
capability. Id. at 20:52–60, 35:5–14; see also id. at 13:47–61 (“the engine is
never operated at less than 30% of MTO, and is thus never operated
inefficiently”).
Running the engine only when it is efficient to do so leads to
improved fuel economy and reduced emissions. Id. at 13:47–51. To achieve
such efficiency, the hybrid vehicle includes various operating modes that
depend on the vehicle’s torque requirements, the battery’s state of charge,
and other operating parameters. Id. at 19:53–55. For example, the hybrid
vehicle may operate in: (1) an all-electric mode, where only the traction
motor provides the torque to propel the vehicle and operation of the engine
would be inefficient (i.e., stop-and-go city driving); (2) an engine-only
mode, where only the engine provides the torque to propel the vehicle and
the engine would run at an efficient level (i.e., highway cruising); (3) a dual-
operation mode, where the traction motor provides additional torque to
propel the vehicle beyond that already provided by the engine and the torque
required to propel the vehicle exceeds the maximum torque output of the
engine (i.e., while accelerating, passing, and climbing hills); and (4) a
battery recharge mode where the engine operates a generator to recharge the
battery while the traction motor drives the vehicle. Id. at 35:66–36:58,
37:26–38:55.
B. The challenged claims
Ford challenges the patentability of claims 1, 6, 7, 9, 15, 21, 23, and
36. Pet. 3. Of the challenged claims, claims 1 and 23 are independent.
Claim 1 is directed to a “hybrid vehicle” (Ex. 1001, 58:13), while claim 23 is
directed to a “method of control” of a hybrid vehicle (id. at 60:22). Each of
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the independent claims recites that the engine is employed when it can
produce torque “efficiently,” which claim 1 describes as when the torque
required to propel the vehicle is “at least equal to a setpoint (SP) [but]
substantially less than the maximum torque output (MTO)” of the engine (id.
at 58:29–37), and claim 23 describes as when the torque required to propel
the vehicle is “between a lower level SP and a maximum torque output
MTO” (id. at 60:23–42).
Claim 1 is illustrative of the challenged claims:
1. A hybrid vehicle, comprising:
an internal combustion engine controllably coupled to
road wheels of said vehicle;

a first electric motor connected to said engine [a]nd
operable to start the engine responsive to a control signal;

a second electric motor connected to road wheels of said
vehicle, and operable as a motor, to apply torque to said wheels
to propel said vehicle, and as a generator, for accepting torque
from at least said wheels for generating current;

a battery, for providing current to said motors and
accepting charging current from at least said second motor; and

a controller for controlling the flow of electrical and
mechanical power between said engine, first and second
motors, and wheels,

wherein said controller starts and operates said engine
when torque require[d] to be produced by said engine to propel
the vehicle and/or to drive either one or both said electric
motor(s) to charge said battery is at least equal to a setpoint
(SP) above which said engine torque is efficiently produced,
and wherein the torque produced by said engine when operated
at said setpoint (SP) is substantially less than the maximum
torque output (MTO) of said engine.

Ex. 1001, 58:13–37 (emphasis added).
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C. The instituted grounds of unpatentability
In the preliminary proceeding, we instituted trial because Ford made a
threshold showing of a “reasonable likelihood” that claims 23 and 36 were
unpatentable as obvious over Severinsky,
3
and claims 1, 6, 7, 9, 15, 21 were
unpatentable as obvious over Severinsky and Ehsani.
4
Dec. to Inst. 10–15.
We now decide whether Ford has proven the unpatentability of these claims
by a “preponderance of the evidence.” See 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.
Cir. 2007). Here, our review centers on the construction of two claim
terms—“road load (RL)” and “setpoint (SP).”
5

1. “Road load” or “RL”
The term “road load” or “RL” appears throughout the claims of the
’347 patent. For example, claim 7, which depends from claim 1, recites that
the operating modes are “responsive to the value for the road load (RL) and

3
U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1003, “Severinsky”).
4
U.S. Patent No. 5,586,613, iss. Dec. 24, 1996 (Ex. 1004, “Ehsani”).
5
Ford also contends that the terms “low-load mode I,” “highway cruising
mode IV,” and “acceleration mode V” are in need of construction. Pet. 16–
17. Those terms are expressly defined by claim 7. Ex. 1001, 58:64–59:8.
As such, no further construction is necessary.
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said setpoint (SP), both expressed as percentages of the maximum torque
output of the engine,” and claim 23 recites the step of “determining the
instantaneous torque RL required to propel said vehicle responsive to an
operator command.”
The specification also describes “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, 12:40–57 (emphasis added).
Elsewhere the specification similarly speaks of road load in terms of a
“torque” requirement:
The vehicle operating mode is determined by a microprocessor
responsive to the “road load,” that is, the vehicle’s
instantaneous torque demands.

* * *
While operating at low speeds, e.g., when the vehicle’s
torque requirements (“road load,” or “RL”) are less than
30% of the engine's maximum torque output (“MTO”),
engine 40 is run only as needed to charge battery bank 22.

Id. at 11:60–63, 36:8–11, respectively (emphases added). Also, in
distinguishing the claimed invention over the prior art, the specification
explains that:
Numerous prior art references . . . indicate the vehicle operating
mode should be controlled in response to vehicle speed . . . [but
none] recognizes that the desired vehicle operational mode
should preferably be controlled in response to the vehicle’s
actual torque requirements, i.e., the road load. Doing so
according to the invention provides superior performance, in
terms of both vehicle response to operator commands and fuel
efficiency . . .

Id. at 13:1–15 (emphasis added).
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These passages from the specification comport with a construction of
“road load” that is limited to an instantaneous torque value, and more
specifically, a torque value which can be expressed in terms of a percentage
of the engine’s “maximum torque output” or “MTO.” For instance, the
specification states that:
road load is shown . . . as varying from 0 at the origin to 200%
of maximum torque output.

* * *
During highway cruising . . . where the road load is between
about 30% and 100% of the engine’s maximum torque output,
the engine alone is used to propel the vehicle.

* * *
[W]hen the microprocessor detects that the road load exceeds
100% of the engine’s maximum torque output, it controls
inverter/charger 27 so that energy flows from battery bank 22 to
traction motor 25, providing torque propelling the vehicle in
addition to that provided by engine 40.

Id. at 37:13–15, 37:45–47, 38:5–10 (emphases added).
We see no reason to depart from these express definitions of “road
load” in terms of an amount of torque. Thus, consistent with the
specification’s many uses of the term, “road load” is properly construed to
be “the amount of instantaneous torque required for propulsion of the
vehicle.”
Paice urges that our construction of “road load” should additionally
account for external forces acting on the vehicle, such as “aerodynamic
drag.” PO Resp. 31–32; see also Ex. 2002 ¶¶ 85–88. Although
aerodynamic forces may play a role in the amount of torque required to
propel the vehicle, we need not address them in order to construe the term
“road load.” That is because the claims and specification of the ’347 patent
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consistently speak of “road load” in a more general sense. In fact, the
specification mentions aerodynamic forces only in the context of a “heavy
vehicle” having “high torque requirements” and “poor aerodynamic
characteristics.” Ex. 1001, 49:9–14. That singular example, however, is not
enough for us to overlook the countless descriptions found elsewhere in the
specification, where “road load” or “RL” is defined simply as “the amount
of torque required to propel the vehicle,” divorced from other potential
forces acting on the vehicle.
2. “Setpoint” or “SP”
Each of independent claims 1 and 23 recites that the engine operates
“efficiently” when the torque required to propel the vehicle is between a
“setpoint (SP)” and a “maximum torque output (MTO).” Paice seeks to
construe the term “setpoint” as “a definite, but potentially variable value at
which a transition between operating modes may occur.” PO Resp. 6–7.
Ford, on the other hand, advocates that “setpoint” means a “predetermined
torque value.” Pet. 16. Paice protests any construction that limits the
meaning of “setpoint” to a “torque value” (PO Resp. 11), arguing that the
specification supports a broader definition that also could encompass a “state
of charge of the battery” (Prelim. Resp. 13–15) or a “transition between
operating modes” (PO Resp. 7–10).
We agree with Paice that the specification speaks of “setpoint” in
terms of a “torque output,” a “state of charge of the battery,” or a “transition
point.” See Ex. 1001, 40:20–54. However, the claim language is not so
broad. Although we recognize that the specification is an important tool in
claim construction, it is the claim language—and the context in which the
disputed term is used—that is of primary importance. Phillips v. AWH
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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”) (citations omitted). Put another way, “the name of
the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998) (quoting Giles Sutherland Rich, Extent of Protection and
Interpretation of Claims—American Perspectives, 21 Int’l Rev. Indus. Prop.
& Copyright L. 497, 499 (1990)).
Here, contrary to Paice’s assertion, the claim language consistently
refers to a “setpoint” in terms of a “torque” requirement. For instance,
claim 1 recites that the controller starts and operates the engine
when torque require[d] to be produced by said engine . . . is at
least equal to a setpoint (SP) above which said engine torque is
efficiently produced, and wherein the torque produced by said
engine when operated at said setpoint (SP) is substantially less
than the maximum torque output (MTO) of said engine.

Ex. 1001, 58:30–37 (emphases added). And, likewise, claim 23 speaks
consistently of “setpoint” or “SP” as being the “lower level,” or limit, at
which the engine can efficiently produce torque, reciting that: the engine is
capable of “efficiently producing torque at loads between a lower level SP
and a maximum torque output”; the engine is employed to propel the vehicle
“when the torque RL required to do so is between said lower level SP and
MTO”; and “wherein the torque produced by said engine when operated at
said setpoint (SP) is substantially less than the maximum torque output.” Id.
at 60:22–54 (emphases added). These express limitations suggest that
“setpoint” is not just any value, but a value that—per the surrounding claim
language—equates to the level of the engine’s “torque.”
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Moreover, we note that claim 23 includes a limitation directed to “the
state of charge of said battery,” but it never correlates that limitation with a
“setpoint” or “SP,” even though those terms are used elsewhere throughout
the claim. Nor does Paice point us to anywhere in the claims that describe
the setpoint in the context of the battery’s state of charge. Indeed, when
speaking of “the state of charge of the battery,” dependent claims 9 and 31
refer to it in terms of falling below “a predetermined level,” not a “setpoint.”
Thus, given the claim language’s unequivocal use of “setpoint” or “SP” in
the context of a “torque” requirement, we construe the terms “setpoint” and
“SP” to mean “a torque value.” Our assessment does not end there,
however.
The specification states that “the value of a setpoint (for example)
may vary somewhat in response to recent [driving] history, or in response to
monitored variables” or may be “reset . . . in response to a repetitive driving
pattern.” Ex. 1001, 40:37–59. But, just because a setpoint may vary under
certain circumstances, that potential variation does not foreclose it from
being “set,” or “fixed,” at some point in time.
6
A setpoint for however short
a period of time still is a setpoint. Any other construction would defeat its
purpose of being set for comparison against another value. For example, the
specification states that “the microprocessor tests sensed and calculated
values for system variables [such as road load (RL)] . . . against setpoints,
and uses the results of the comparisons to control the mode of vehicle
operation.” Ex. 1001, 40:22–31 (emphasis added). That description makes

6
The definition of “set” is “determined . . . premeditated . . . fixed by
authority or appointment . . . prescribed, specified . . . built-in . . . settled,
persistent.” Merriam-Webster’s Collegiate Dictionary (10
th
ed. 2000).
Ex. 3001.
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clear that the comparative setpoint is a pre-defined value. Indeed, the
specification refers to setpoint in terms of a “defined setpoint.” Id. at 19:64.
As such, we construe the term “setpoint” to mean at least “a predefined
torque value that may or may not be reset.”
7

Finally, we cannot disregard Paice’s argument that our construction is
“at odds” with the construction adopted by two district courts in related
actions.
8
PO Resp. 6. According to Paice, each of the district courts
construed “setpoint,” as used in the ’347 patent, to mean “a definite, but
potentially variable value at which a transition between operating modes
may occur.” Id. Although, generally, we construe claim terms under a
different standard than that of a district court, and thus, are not bound by a
district court’s prior claim construction, we nonetheless feel compelled, by
the circumstances of this case, to evaluate the district courts’ construction in
light of our construction. See Power Integrations, Inc. v. Lee, 2015 WL
4757642, at *6 (Fed. Cir. Aug. 12, 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”) .
Here, the first half of the district courts’ construction—“a definite, but
potentially variable value”— coincides squarely with our construction of
“setpoint” as a “predefined” value “that may or may not be reset.” The

7
Even Paice’s declarant agreed that, given the “comparison” being made in
claims 1 and 23, the “most straightforward” construction is that “setpoint is a
torque value.” Ex. 1039, 79:1–80:25.
8
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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difference, however, lies in our construction of “setpoint” as a “torque”
value. On that point, at least one of the district courts 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. 1011, 10 (citing the ’347 patent, 40:28–31). 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, 415 F.3d at 1314 (“the context in
which a term is used in the asserted claim can be highly instructive”). Here,
the claims instruct us that “setpoint,” when read in the context of the
surrounding language, is limited to a torque value. We decline to read the
term as also encompassing a state of charge of the battery, as the district
court did. Thus, we stand by our determination that claims 1 and 23
consistently refer to “setpoint” as a “torque” requirement.
With regard to the second half of the district courts’ construction of
“setpoint” as “a transition between operating modes,” we believe it imports
an extraneous limitation into the meaning of “setpoint” that is neither
supported by the claim language nor the specification. In particular,
claims 1 and 23 expressly describe “setpoint (SP)” as being the lower limit
at which the engine can “efficiently” produce torque. Those claims make no
mention of this lower limit as being a “transition” point for the “operating
modes,” although it potentially may be. Indeed, the specification
acknowledges that the mode of operation does not always transition, or
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switch, at the setpoint, but instead depends on a number of operating
parameters:
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, 19:53–64 (emphasis added).
Moreover, that a “setpoint” is not a per se transition between
operating modes is reinforced by the fact that only the dependent claims, for
example claims 7 and 28, mention “setpoint” in terms of “operating modes.”
See id. at 58:58–60, 61:11–13. 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,
although the district courts may have had justification for a narrower
construction of “setpoint,” we believe it is unnecessary here and may lead to
confusion given our standard of applying the “broadest reasonable
construction” to the terms of a claim. See 37 C.F.R. § 42.100(b). As such,
we maintain our construction of “setpoint,” as discussed above, which
arguably may differ from the construction arrived at in the related district
court actions.
B. The asserted grounds
1. Claims 23 and 36—obviousness over Severinsky
Ford relies primarily on Severinsky as teaching the limitations of the
contested claims, including claim 23 on which Paice focuses the majority of
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its response in defending the ’347 patent.
9
See PO Resp. 12–52. Like claim
23, Severinsky discloses the essential components of a hybrid electric
vehicle, including an internal combustion engine, an electric motor, a
battery, and a microprocessor for controlling the vehicle’s mode of
operation, i.e., an all-electric mode, an engine-only mode, or a hybrid mode.
Compare Ex. 1003, Fig. 3 (Severinsky) with Ex. 1001, Fig. 4 (the ’347
patent).
In determining whether to employ the engine or the motor or both,
Severinsky’s microprocessor bases its decision on “various monitored
operating conditions” (id. at 6:19–26) that include “the operator’s inputs and
the vehicle’s performance” (id. at 14:15–18). Furthermore, Severinsky
teaches that the microprocessor activates the engine only when it is
“efficient” to do so:
the internal combustion engine is operated only under the most
efficient conditions of output power[
10
] 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. 1003, 7:8–16 (emphasis added); see also id. at 9:40–52 (“the internal
combustion engine operates only in its most efficient operating range”).
Even more importantly, Severinsky teaches that the engine’s efficient range

9
Paice does not dispute that Severinsky is prior art against the ’347 patent.
10
Paice’s declarant testified that a skilled artisan would have understood that
“power is a product of torque and speed.” Ex. 1039, 32:6–13, 82:10–11
(emphasis added); see also Ex. 2002 (“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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is based on the “torque” level required to propel the vehicle, stating 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).
Central to our analysis is the recitation in claim 23 that the engine can
operate “efficiently” and be employed to propel the vehicle “when the torque
RL [road load] required to do so is between a lower level SP [setpoint] and a
maximum torque output MTO.” Ex. 1001, 60:22–25, 39–41. Paice does not
dispute that Severinsky teaches operating the engine when it is efficient to
do so. Rather, Paice faults Severinsky, repeatedly so, for failing to teach that
efficient operation of the engine is based on “road load,” or “RL,” as
required by claim 23. PO Resp. 12; see also id. at 26 (“Severinsky ’970
does not consider road load at all”), id. at 46 (“the vehicle taught by
Severinsky does not calculate road load or have any concept of road load”).
In Paice’s view, “Severinsky determines when to turn the engine on
based on the speed of the vehicle in contrast to the ’347 patent, which turns
the engine on based on road load.” Id. at 17. More specifically, Paice
argues, “nowhere does Severinsky disclose that road load or any other
torque demand is considered when determining when to employ the engine
or if the road load is above the setpoint when the engine is operated.” Id. at
37; see also id. at 19, 26, 34–36 (arguing same). Instead, according to Paice,
Severinsky “uses speed as the one factor in determining whether to employ
the engine.” Id. at 56 (emphasis added). In support of that proposition,
Paice cites various passages in Severinsky that discuss “speed.” See, e.g., id.
at 18–19, 27, 29–30.
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We are not persuaded by Paice’s focus on isolated passages of
Severinsky, while downplaying its teaching as a whole. It is the totality of
Severinsky that must be assessed, not its individual parts. Paice would have
us believe that “speed” is the sole factor used by Severinsky’s
microprocessor in determining when to employ the engine. That is simply
not the case. Although Severinsky describes the use of “speed” as a factor
considered by the microprocessor, Severinsky makes clear that the
microprocessor also uses the vehicle’s “torque” requirements 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. 1003, 17:11–15 (emphases added). And, while Severinsky may not use
the term “road load” expressly, its description of the engine’s operation
being “responsive to the load imposed by the vehicle’s propulsion
requirements” is the same as the engine being employed in response to “road
load,” which we have construed to mean “the torque required for propulsion
of the vehicle.” As such, we find that Severinsky teaches an engine control
strategy that depends on road load, or “RL,” as required by claim 23.
11

11
We are not persuaded by the testimony of Paice’s declarant, who testifies
that this passage in Severinsky relates to “providing torque to the motor” and
“is not related to determining when to employ the engine.” Ex. 2002 ¶ 90.
Plainly, this passage relates to operation of the engine—it states that the
microprocessor determines the load “to be provided to the engine” and
responds to that load “so that the engine 40 can be operated in its most fuel
efficient operating range.” Ex. 1003, 17:7–15 (emphases added).
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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 “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 20:63–67 (emphasis added).
Severinsky’s “operational point” for the engine is no different than the
“setpoint,” or “SP,” called for by claim 23. Indeed, just as Severinsky’s
“operational point” is expressed in terms of a percentage of maximum
torque—“60–90% of its maximum torque”—so too is the claimed
“setpoint.” For instance, claim 29, which depends from claim 23, recites
that “said setpoint SP is at least approximately 30% of MTO.” Ex. 1001,
61:27–28; see also id. at 58:55–57. That Severinsky describes the
operational point for the engine in terms similar to, if not the same as, the
claimed invention runs counter to Paice’s argument that Severinsky employs
the engine based on speed alone.
Also, we are not persuaded by Paice’s argument that Severinsky does
not teach a “lower level SP,” or setpoint, as required by claim 23. PO Resp.
34–35, 50–52. Rather, we find credible the testimony of Ford’s declarant,
Dr. Davis, that a skilled artisan would have understood the lower limit of
Severinsky’s range—60%—to be a “lower level” setpoint. See Pet. 21
(citing Ex. 1005 ¶¶ 201–204, 279); see also id. at 311, 398–402. Thus, we
find that Severinsky fulfills the claim requirement of employing the engine
to propel the vehicle when the torque demand, or road load, is between a
lower level setpoint (SP) and the engine’s maximum torque output (MTO).
Paice cites various passages in Severinsky that purportedly show
Severinsky’s engine control strategy is “based on vehicle speed, and not the
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road load or any other torque demand.” PO Resp. 17–19, 27, 29–30. For
example, Paice points to Severinsky’s disclosure that the engine is turned off
in “low speed circumstances” and turned on during “highway cruising” at
moderate speeds. Id. at 17–18. That disclosure, however, does not foreclose
Severinsky from teaching the engine’s torque requirements as a
determinative factor of when to employ the engine. In other words, torque
and speed are not mutually exclusive concepts. Indeed, the ’347 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. 1001,
17:34–37, 19:35–36, respectively (emphasis added). Thus, just as “speed”
plays some role in the modes of operation in the ’347 patent, so too does it in
Severinsky.
Paice also points to Severinsky’s disclosure of “speed-responsive
hysteresis” to argue that Severinsky’s control strategy is based on speed, not
road load. PO Resp. 27–28. According to Paice, “it simply makes no sense
for Severinsky to use ‘speed responsive-hysteresis’ if Severinsky uses road
load to control engine starts and stops.” Id. at 27. But Severinsky only
discusses the implementation of speed-responsive hysteresis for purposes of
eliminating “nuisance engine starts.” Ex. 1003, 18:40–42. That Severinsky
may additionally teach a speed-responsive hysteresis feature as a way to
check and control unintended engine starts does not preclude it from also
teaching the use of road load as a way to determine when to employ the
engine in the first instance, i.e., turn the engine on. We find persuasive the
testimony of Ford’s declarant, Dr. Stein, confirming that “[e]ven if
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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. 1038 ¶ 19. Indeed, like Severinsky, the ’347
patent describes hysteresis in terms of speed, explaining that “the excessive
mode switching otherwise likely to be encountered in suburban traffic can be
largely avoided [by] implementing this ‘low-speed hysteresis’.” Ex. 1001,
43:67–44:3.
Once again, Paice seeks to hold Severinsky to a different standard
than it holds the claimed invention. That Severinsky may have an additional
speed-responsive hysteresis feature 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. 1003, 17:11–15.
Thus, we reject Paice’s arguments questioning Severinsky’s references to
“speed,” when the ’347 patent itself recognizes that “speed” plays a role in a
road load-responsive hybrid control strategy.
12

Paice also calls Severinsky defective because its “microprocessor
receives inputs from the driver.” PO Resp. 29 n.9; see also id. at 33
(“Severinsky only discloses measuring the position of the accelerator
pedal.”). But Paice fails to recognize that claim 23 does not preclude inputs
from the driver as part of the control strategy. Indeed, claim 23 expressly
calls for “determining the instantaneous torque RL required to propel said
vehicle responsive to an operator command.” Ex. 1001, 60:33–34. And the

12
Even claim 5 of the ’347 patent acknowledges that “said setpoint SP may
be varied by said controller as [a] function of engine speed.” Ex. 1001,
58:53–54.
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specification of the ’347 patent likewise explains that the microprocessor is
“responsive to . . . evaluation of the road load, that is, the vehicle’s
instantaneous torque demands and input commands provided by the operator
of the vehicle.” Id. at 17:27–32; see also id. at 38:12–14 (“the torque
required to propel the vehicle varies as indicated by the operator’s
commands”). The specification goes on to explain that the “operator input
commands” monitored by the microprocessor include “the motion of
accelerator and brake pedals 69 and 70,” specifically, “the rate at which the
operator depresses pedals 69 and 70 as well as the degree to which pedals 69
and 70 are depressed.” Id. at 27:20–34. Given that the claims and
specification of the ’347 patent call for the controller to be responsive not
only to road load but also to driver input commands (such as pedal position),
we are not moved by Paice’s attack on Severinsky for teaching this same
feature.
As another purported difference, Paice argues that Severinsky’s
disclosure of a range of “output torques of the engine” is “unrelated to input
torque demands taught by the ’347 patent, for example, the instantaneous
torque required to propel the vehicle (i.e., road load).” PO Resp. 14; see
also id. at 22–23 (“the operating ranges identified by Severinsky are
representative of the output torque of the engine and not the [input] torque
demand”). In other words, according to Paice, “road load” (or “RL”), as
used in the claims, refers to input torque, not output torque. This argument
fails for the simple reason that the claims themselves express “road load” as
a torque output, not an input. For example, claim 23 recites that the engine
is employed “when the torque RL . . . is between said lower level SP
[setpoint] and MTO [maximum torque output].” And claim 29, which
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depends from claim 23, recites that “said setpoint SP is at least
approximately 30% of MTO.” Moreover, claim 7 states explicitly that “the
value for road load (RL) and said setpoint (SP) [are] both expressed as
percentages of the maximum torque output.” Thus, we find disingenuous
Paice’s attempt to characterize “road load” as a torque “input” when the
claims expressly state otherwise.
Paice also argues that Severinsky does not utilize the engine to charge
the battery in the manner required by claim 23. PO Resp. 45–50.
According to Paice, Severinsky “teaches a much less sophisticated
approach” (id. at 47) that looks to “the state of charge of the battery and not
road load” (id. at 46) in determining when to charge the battery. But the
problem with that argument is that the claimed invention recites the same
approach as Severinsky—using the “state of charge of the battery” to
indicate when charging is necessary. For example, claim 23 recites that the
engine is employed “to charge said battery when the state of charge of the
battery indicates the desirability of doing so.” Ex. 1001, 60:45–51. And
like claim 23, Severinsky teaches a “battery charging mode” that is
“responsive to monitoring the state of charge of battery 22.” Ex. 1003,
15:1–10 (emphasis added). Severinsky further explains that
microprocessor 48 monitors the state of charge of batteries 22
. . . and recharges the batteries whenever the charge is depleted
by more than about 10-20%. . . . Under conditions of
maximum battery usage, e.g., in heavy traffic . . . internal
combustion engine 40 charges the battery perhaps once per
hour for a period of approximately twelve minutes.

Id. at 18:9–22. Given these plain teachings, we find that a skilled artisan
would have understood Severinsky to disclose the battery charging
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limitation of claim 23, which, like Severinsky, is responsive to “the state of
charge” of the battery.
In sum, we conclude Ford has demonstrated, by a preponderance of
the evidence, that claim 23 would have been obvious over Severinsky. Also,
we have considered Ford’s evidence and argument against the patentability
of dependent claim 36 (Pet. 33–34), which Paice does not argue separately,
and likewise determine that it would have been obvious over Severinsky.
2. Claims 1, 6, 7, 9, 15, and 21—Obviousness over Severinsky
and Ehsani

Ford challenges independent claim 1, as well as dependent claims 6, 7,
9, 15, and 21, on the ground that the claimed invention would have been
obvious over the combined teachings of Severinsky and Ehsani. Pet. 34–51.
Claim 1 recites a hybrid vehicle having two electric motors, one acting as a
starter motor for the engine and another acting as a generator for the battery.
Ex. 1001, 58:16–22. Acknowledging that Severinsky discloses a single
electric motor having the dual functionality of both a starter motor and a
generator, Ford points to the long history of starter motors in the automotive
industry (dating back to 1912) as evidence that equipping Severinsky with a
separate starter motor would have been nothing more than an obvious design
choice in the eyes of skilled artisans at the time of the claimed invention.
Pet. 36 (citing Ex. 1005 ¶¶ 329–333). Indeed, Severinsky recognizes as
much, explaining that the decision to eliminate a separate starter motor was a
function of “convenience” in terms of “cost, weight, and manufacturing.”
Ex. 1003, 21:39–55; see also id. at 6:36–39.
Nonetheless, Ford relies on Ehsani as teaching expressly the use of
two electric motors in a hybrid vehicle. Pet. 37 (citing Ex. 1004, Fig. 5,
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3:24–25, 8:32–34). And, we find credible 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 starter motor,
as taught by Ehsani, so that “noise vibration and harshness (NVH) issues
would be greatly minimized.” Ex. 1005 ¶¶ 366–68.
Paice does not dispute that a skilled artisan would have had reason to
combine the teachings of Severinsky and Ehsani. See PO Resp. 52–54.
Instead, Paice argues that, even if properly combined, Ehsani does not
remedy the deficiencies of Severinsky. Id. at 52. In so arguing, Paice raises
the same arguments for patentability of claims 1, 7 and 9 as it made for
claim 23, that is, “Severinsky does not consider torque demands when
determining whether to employ the engine. It considers speed.” Id. at 53;
see also id. at 56, 57, 58 (“Severinsky does not consider road load . . . it uses
speed as the one factor in determining when to employ the engine”). As
discussed supra with respect to claim 23, Paice’s assertions on this point are
not persuasive. Because we already found that Severinsky considers torque
in determining when to employ the engine, we reject Paice’s arguments with
respect to claims 1, 7, and 9 for the same reasons we rejected them with
respect to claim 23. Paice does not argue claims 6, 15, and 21 separately.
After considering the totality of Ford’s evidence and arguments (Pet. 33–34,
Reply 24–25), we determine that a preponderance of the evidence weighs
against patentability of claims 1, 6, 7, 9, 15, and 21, on the basis that they
would have been rendered obvious by Severinsky and Ehsani.
13

13
For claim 9, Paice also argues that Ehsani “teaches away” because it states
that the generator motor “can be” smaller than the traction motor. PO Resp.
59. This disclosure by Ehsani does not teach away because it “does not
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IV. CONCLUSION
In sum, we conclude Ford has demonstrated, by a preponderance of
the evidence, that claims 23 and 36 would have been obvious over
Severinsky, and that claims 1, 6, 7, 9, 15, and 21 would have been obvious
over Severinsky and Ehsani.
V. ORDER
Accordingly, it is hereby:
ORDERED that claims 1, 6, 7, 9, 15, 21, 23 and 36 of the ’347 patent
are held unpatentable;
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.

criticize, discredit, or otherwise discourage” the use of the engine to drive
the generator motor for charging the battery. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004).
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FOR PETITIONER:

Frank A. Angileri
John E. Nemazi
John P. Rondini
Erin K. Bowles
BROOKS KUSHMAN P.C.
FPGP010IPR2@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
W. Peter Guarnieri
FISH & RICHARDSON P.C.
riffe@fr.com
greene@fr.com
IPR36351-0011IP1@fr.com