Paper 66
`Date: January 7, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IDLE FREE SYSTEMS, INC.
`Petitioner
`
`v.
`
`BERGSTROM, INC.
`Patent Owner
`____________
`
`Case IPR2012-00027
`Patent 7,591,303
`____________
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and
`MICHAEL J. FITZPATRICK, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`Case IPR2012-00027
`Patent 7,591,303
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`
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`BACKGROUND
`
`
`
`Introduction
`A.
`Petitioner, Idle Free Systems, Inc. (“Idle Free”), filed a Petition on
`
`September 18, 2012, for an inter partes review of claims 1-23 of U.S. Patent No.
`7,591,303 (“the ’303 patent”) pursuant to 35 U.S.C. §§ 311 et seq. On January 31,
`2013, the Board granted the Petition and instituted trial for all claims 1-23 on less
`than all of the grounds of unpatentability alleged in the Petition. Paper 14.
`
`After institution of trial, Bergstrom, Inc. (“Bergstrom”) filed a Patent Owner
`Response (“PO Resp.”). Paper 21. In a telephone conference call held on May 20,
`2013, Bergstrom conceded the unpatentability of claims 1-4, 8, 10, and 17-19, and
`the Board indicated that those claims would be cancelled, without need of further
`briefing for those claims on any ground of unpatentability. Paper 26.
`
`Bergstrom also filed a Motion to Amend Claims, which was dismissed on
`June 11, 2013. Paper 26. Bergstrom then filed a Renewed Motion to Amend
`Claims, by substituting proposed new claims 24-26 for claims 17-19, respectively.
`Paper 29. Idle Free filed a Reply (Paper 35) to Bergstrom’s Patent Owner
`Response, and an Opposition (Paper 36) to Bergstrom’s Renewed Motion to
`Amend Claims. Bergstrom then filed a Reply (Paper 41) to Idle Free’s Opposition
`to Bergstrom’s Renewed Motion to Amend Claims.
`Oral hearing was held on October 7, 2013.1
`
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`
`1 A transcript of the final hearing is included in the record as Exhibit 3001.
`
`2
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`Case IPR2012-00027
`Patent 7,591,303
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`
`Idle Free has shown that claims 5-7, 9, 11-16, and 20-23 of the ’303 patent
`
`are unpatentable. Bergstrom has conceded the unpatentability of claims 1-4, 8, 10,
`and 17-19 of the ’303 patent.
`Bergstrom’s Renewed Motion to Amend Claims is denied.
`
`
`
`
`The Invention of the ’303 Patent
`B.
`The disclosed invention of the ’303 patent relates to a vehicle air
`
`conditioning system and a method of operating the same. Ex. 1001, Abstr.: 1-3.
`The ’303 patent states that the method operates the air conditioning system at one
`capacity when the engine is running, and at a second capacity when the engine is
`not running. Id. at Abstr.: 3-6. It also states that the selection of the particular
`capacities is based on the power capacity of the source of electric power from
`which the air conditioning system is operated. Id. at Abstr.: 6-8. For instance,
`when a storage battery is used to power the air conditioning system during engine
`off conditions, the second capacity is lower than the capacity at which the system
`is operated when the engine is running. Id. at Abstr.: 8-11.
`
`The specification states that there exists a need in the art for a vehicle
`heating, ventilation, and air conditioning system that is able to provide air
`conditioning of the interior of the vehicle, not only during periods of engine
`operation, but also during “engine off or no-idle” conditions. Id. at 2:27-31.
`According to the specification, the invention provides a new and improved heating,
`ventilating, and air conditioning system for a vehicle that may be operated
`regardless of the operational state of the engine. Id. at 2:35-38. The system may
`be operated to condition the interior compartments of a vehicle while the engine is
`running and also while the engine is in a “no-idle (off)” condition. Id. at 2:38-42.
`
`3
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`Case IPR2012-00027
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`C.
`
`
`Exemplary Claims2
`Claims 1, 13, and 17 are the only independent claims:
`
`1.
`A method of operating a vehicle air conditioning system,
`the vehicle having an engine, to provide engine on and engine off
`operation, comprising the steps of:
`
`operating the air conditioning system at a first capacity when
`
`the engine is running; and
`
`operating the air conditioning system at a second capacity when
`
`the engine is not running.
`
`13. A method of operating a vehicle air conditioning
`
`system having an interior compartment fan and a compressor,
`the vehicle having an engine, to provide engine on and engine
`off operation, comprising the steps of:
`
`operating at least one of the interior compartment fan and
`
`the compressor of the air conditioning system at a first speed
`when the engine is running; and
`
`operating at least one of the interior compartment fan and
`
`the compressor of the air conditioning system at a second speed
`when the engine is not running.
`
`17. A method of operating a vehicle air conditioning
`
`system, the vehicle having an engine, to provide engine on and
`engine off operation, comprising the steps of:
`
`operating the air conditioning system with at least
`
`electric power generated as a result of the engine running when
`the engine is running; and
`
`
`
`2 Although Bergstrom conceded the unpatentability of claims 1 and 17, the content
`of these claims are still relevant for determining the patentability of the claims
`which depend from claim 1 or claim 17.
`
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`D.
`
`
`operating the air conditioning system with stored electric
`
`power when the engine is not running.
`
`The Prior Art References Supporting Alleged
`Unpatentability of Claims 5-7, 9, 11-16, and 20-23
`
`
`
`
`Exhibit
`1005
`Exhibit
`1007
`Exhibit
`1011
`Exhibit
`1008
`
`July 4, 2002
`
`March 29, 1977
`
`February 9, 1993
`
`
`
`Iritani
`
`US Published App.
`2002/0084769 A1
`Erdman US Patent 4,015,182
`
`Yoshida3 Japanese Published Application
`JP H05-32121
`English Translation of Yoshida
`
`
`
`
`E.
`
`
`
`
`
`The Still-Pending Grounds of
`Unpatentability Against Claims 5-7, 9, 11-16, and 20-23
`
`Claims
`
`Iritani
`
`Erdman and
`Yoshida
`
`References
`
`Claims 5-7, 9, 11-16, 20-23
`
`Claims 5-7, 9, 11-16, 20-23
`
`Grounds
`
`§ 102(e)
`
`§ 103(a)
`
`
`DISCUSSION
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable construction in light of the specification of
`the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
`
`
`3 In this opinion, all references to “Yoshida,” unless otherwise noted, are to the
`English translation of the prior art reference, Exhibit 1008.
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`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms are also
`given their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`If an inventor acts as his or her own lexicographer, the definition must be set
`forth in the specification with reasonable clarity, deliberateness, and precision.
`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir.
`1998). Neither Idle Free nor Bergstrom contends that the specification of the ’303
`patent, as filed, coined a new meaning for any term, different from the ordinary
`recognized meaning for any term.
`
`If a feature is not necessary to give meaning to what the inventor means by a
`claim term, it would be “extraneous” and should not be read into the claim.
`Renishaw PLC, 158 F.3d at 1249; E.I. du Pont de Nemours & Co. v. Phillips
`Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
`Engine off
`The preamble of each of independent claims 1, 13, and 17 recites the phrase
`
`“to provide engine on and engine off operation” for a method of operating a
`vehicle air conditioning system. The body of each of claims 1, 13, and 17,
`however, refers to operations of the vehicle air conditioning system when the
`engine is running and when the engine is not running, and makes no mention of
`“engine on” operation or “engine off” operation.
`
`According to Bergstrom, “engine off” cannot be met by an engine that is
`merely stopped or is not running, but requires that it be “completely off” such that
`there are no associated electronics in the ignition system that are primed and ready
`to start, automatically, the engine, upon detection of a certain condition. PO Resp.
`12-13.
`
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`For reasons discussed below, Bergstrom’s argument that “completely off”
`
`should be construed as not startable but for manual intervention is unpersuasive.
`
`First, we note that the claims require only “engine off” operation of the air
`conditioning system, not “vehicle electronics off” operation of the air conditioning
`system. Secondly, it is not in dispute that if a vehicle is being driven, the engine is
`on. The question of “engine off’ arises only for time periods when the vehicle is
`not being driven. In that regard, in numerous instances the specification of the
`’303 patent equates “off” to the vehicle engine’s “no idle.” Note these portions of
`the specification of the ’303 patent (Ex. 1001), where the designation “(off)”
`follows immediately after the term “no-idle” or when the designation “(no idle)”
`follows immediately after the term “engine off”: 2:42; 6:6-7; 9:50. Idle Free also
`points out other examples of how the specification of the ’303 patent equates
`engine “on/off” with engine “run/not run.” Reply 6-7 (Paper 35).
`
`We note also the description in the specification of the ’303 patent about
`prior art “belt-driven” compressors and pumps. The specification describes that
`such belt-driven systems are unable to operate when the engine is turned off. Ex.
`1001, 2:4-5. When the engine is stopped or not running, the engine driven belt
`also is not moving. It is not necessary to adopt an interpretation as narrow as that
`which Bergstrom urges. Construing “engine off” as “engine not running” is,
`therefore, consistent with the specification. It also constitutes the broadest
`reasonable interpretation in light of the specification.
`
`Bergstrom argues that its specification makes clear that the air conditioning
`system provides engine off operation even when the vehicle is completely shut
`down. PO Resp. 13:7-10. The argument is unpersuasive because the specification
`of the ’303 patent makes no distinction between shut down and completely shut
`down, or between engine off and engine completely off. The specification
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`discloses no electronics to monitor any such condition and to start, automatically,
`the engine when a monitored condition is detected. Also, the argument is without
`merit because the specification does not preclude satisfaction of the engine off
`condition by a stopped or non-running engine.
`
`Bergstrom asserts that different claim terms are presumed to have different
`meanings, citing several decisions of the United States Court of Appeals for the
`Federal Circuit. PO Resp. 13 n.3. On that basis, Bergstrom argues that “engine
`off” must not mean the same as “engine is not running,” because both terms appear
`in the same claim. The argument is unpersuasive, because the claim interpretation
`principle that different terms have different meanings is only an initial presumption
`that can be rebutted by evidence such as showing how the terms have been used in
`the specification. See Applied Medical Resources v. U.S. Surgical Corp., 448 F.3d
`1324, 1333 n.3 (Fed. Cir. 2006); CAE Screenplates, Inc. v. Heinrich Fiedler GmbH
`& Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000). The numerous examples of the
`language used in the specification of the ’303 patent, as noted above, amply refute
`any such presumption here.
`
`In any event, “engine off operation” appears only in the preamble of the
`independent claims. Bergstrom acknowledges that preamble features are limiting
`only if they are necessary to give life and meaning to the claimed invention. PO
`Resp. 12 n.2. Here, because the body of each independent claim recites only the
`condition of “engine is not running,” the preamble is not restrictive because it is
`not necessary for the limiting aspect of the term “engine off” in the preamble to go
`beyond “not running.”
`
`We have read the entirety of the specification of the ’303 patent and can find
`no reasonable instance where interpreting “engine off” as an engine being in a
`stopped or not running state would be inconsistent with the disclosure. Bergstrom
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`also has identified no such disclosure in the specification of the ’303 patent.
`Bergstrom’s argument, that for the engine to be off, electronic circuits that
`automatically start the engine on a certain detected condition also must be off, is
`unpersuasive, particularly under the rule of broadest reasonable interpretation in
`light of the specification. Thus, we conclude that, regardless of whether there are
`active electronic circuits that, upon the detection of a certain condition, cause the
`engine to be started automatically without manual intervention, an engine that is
`not running and needs to be started to run is “off.”
`
`
`
`B. Alleged Anticipation of Claims 5-7, 9, 11-16,
`
`and 20-23, by Iritani, under 35 U.S.C. § 102(e)
`
`
`
`Petitioner asserts that claims 5-7, 9, 11-16, and 20-23, are unpatentable
`under 35 U.S.C. § 102(e) as anticipated by Iritani. Claims 5-7, 9, 11, and 12
`depend, directly or indirectly, from claim 1. Claims 14-16 depend, directly or
`indirectly, from claim 13. Claims 20-23 depend, directly or indirectly, from
`claim 17.
`
`We have reviewed Idle Free’s anticipation argument and supporting
`evidence, including Iritani’s disclosure, the declaration of Mr. Mark D. Williams
`(Ex. 1002), and the detailed claim chart section appearing on pages 12-22 of the
`Petition. The claim chart persuasively reads all elements of each of claims 5-7, 9,
`11-16, and 20-23 onto the disclosure of Iritani. Despite the counter-arguments in
`Bergstrom’s Patent Owner Response, and the evidence cited therein, which we also
`have considered, Idle Free has shown, by a preponderance of the evidence, that
`each of claims 5-7, 9, 11-16, and 20-23 is unpatentable, under 35 U.S.C. § 102(e),
`as anticipated by Iritani.
`
`To establish anticipation, each and every element in a claim, arranged as is
`recited in the claim, must be found in a single prior art reference. Net MoneyIN,
`
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`Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v.
`Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
`
`Under 35 U.S.C. § 112(d), a dependent claim includes all of the limitations
`contained in the claim on which it depends. Claim 1 recites operating the air
`conditioning system at a first capacity when the engine is running, and at a second
`capacity when the engine is not running. Claim 13 recites operating at least the fan
`or the compressor of the air conditioning system at a first speed when the engine is
`running, and at a second speed when the engine is not running. Claim 17 recites
`operating the air conditioning system with at least power generated as a result of
`the engine running when the engine is running, and with stored electric power
`when the engine is not running. In its Patent Owner Response, Bergstrom’s
`arguments are directed to the recitation of “engine off operation” in the preamble
`of each of independent claims 1, 13, and 17.
`
`Of significance to each claim, particularly independent claim 1, Iritani
`states:
`[A]ccording to the present invention, air-conditioning capacity of the
`air conditioning unit is set lower while the engine is stopped than the
`air-conditioning capacity while the engine is driven. . . . While the
`engine is driven, the air-conditioning performance of the air
`conditioning unit is set higher to improve an amenity in a passenger
`compartment of the vehicle.
`
`Ex. 1005 ¶ 0012.
`
`With regard to independent claim 13, we credit the testimony and
`explanation of Idle Free’s expert witness, Mr. Williams, that Iritani implements
`two different air conditioning capacities, by governing the speed of a variable
`speed compressor. Ex. 1002 ¶ 33. In that regard, Iritani states: “[T]he set usable
`electrical power SUEP is set at the air-conditioning usable electrical power (A/C
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`UEP). Thereafter, at step S98, the rotation speed of the electrical compressor 41 is
`determined based on the set usable electrical power SUEP.” Ex. 1005 ¶ 0056.
`Iritani further states:
`[A]ir-conditioning usable electrical power A/C UEP is calculated by
`multiplying the air-conditioning necessary electrical power NEP by
`the constant K. While the engine 1 is operated, the constant K is
`changed as indicated by the line “d” shown in FIG. 7. . . . On the
`other hand, while the engine 1 is stopped, the constant K is changed as
`indicated by the line “c” shown in FIG. 7.
`
`Id. at ¶ 0062.
`
`With regard to independent claim 17, Iritani discloses that when electrical
`motor generator 2 is used for its electrical generating function, as in when the
`engine is running, the capacity of the air conditioning unit is set higher so that
`performance of air conditioning unit 6 can be improved. Id. at ¶ 0109. We credit
`the explanatory testimony of Mr. Williams that such disclosure means, while the
`engine is running, the air conditioning system fills some of its power needs from
`the power generated by the engine. Ex. 1002 ¶ 29.
`
`Also with regard to independent claim 17, Iritani discloses that, while the
`engine is stopped, electrical power used for the air conditioning unit is restricted, to
`reduce the load on the battery. Ex. 1005 ¶ 0068. We credit the testimony of
`Mr. Williams that such disclosure means that, while the engine is not running, the
`air conditioning system is operated with stored electric power. Ex. 1002 ¶ 30.
`
`Based on its proposed interpretation of “engine off,” Bergstrom argues that
`Iritani does not disclose both “engine on” and “engine off” operation of a vehicle
`air conditioning system, as is recited in the preamble of each independent claim.
`PO Resp. 11:19 to 12:2; 14:1-3; 15:5-12. Berstrom further argues that, in Iritani’s
`vehicle, while the engine is stopped and not running and the air conditioning
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`system is operating, the state of the vehicle’s battery is monitored, and, if the
`stored charge of the battery decreases beyond a certain pre-set level, such as 30%
`of its full capacity, the electronics in the vehicle automatically start the engine to
`generate electrical power to recharge the battery. Ex. 1005 ¶ 0059. On that basis,
`Bergstrom argues that in Iritani, even when the engine is stopped and not running,
`it is not “off” as is required by the claims. PO Resp. 14:9-15.
`
`We, however, already have discussed and rejected Bergstrom’s
`interpretation of “engine off.” Thus, Bergstrom’s contention is unpersuasive.
`
`Bergstrom further points out that in Iritani’s system, the air conditioning
`system is operating only when the vehicle’s ignition switch is in the on position,
`even if the engine is stopped and not running. PO Resp. 14:16 to 15:4. That fact
`does not help Bergstrom’s position. It is of no moment that in Iritani’s disclosed
`vehicle, the ignition switch is placed in the “on” position to activate the automatic
`controller that monitors the battery condition and decides when to start the engine.
`The claims do not require any particular placement of the vehicle’s ignition switch.
`As we have explained above, “engine off” does not require the vehicle’s
`electronics to be turned off.
`
`C. Alleged Obviousness of Claims 5-7, 9, 11-16, and
`20-23, over Erdman and Yoshida, under 35 U.S.C. § 103(a)
`
`With regard to the alleged obviousness of claims 5-7, 9, 11-16, and 20-23,
`
`over Erdman and Yoshida, we have reviewed Idle Free’s Petition, Bergstrom’s
`Patent Owner Response, and Idle Free’s Reply, as well as the evidence discussed
`in those papers. We are persuaded, by a preponderance of the evidence, that each
`of claims 5-7, 9, 11-16, and 20-23, is unpatentable, under 35 U.S.C. § 103(a), for
`obviousness over Erdman and Yoshida.
`
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`Erdman
`Erdman discloses a refrigeration system comprising a compressor driven by
`
`a motor for circulating a suitable coolant, first, through a condenser, and then,
`through an evaporator disposed within a chamber or compartment to be cooled.
`Ex. 1007, Abstr.: 1-5. The system is adapted particularly for use (1) as an air
`conditioning system for automobiles and recreational vehicles, (2) as a portable
`refrigerating apparatus in recreational vehicles, and (3) as a refrigerating apparatus
`for trucks or other transport vehicles. Id. at Abstr.: 5-10; 1:17-23. Thus, Erdman
`describes use of its disclosed refrigeration system as an air conditioning system for
`automobiles and recreational vehicles.
`
`Erdman expressly states: “[A] power source such as a battery, alternator, or
`generator (or rectified alternating current) serves to energize the motor.” Ex. 1007,
`Abstr.: 10-12. It is not reasonably disputable, and Bergstrom does not dispute, that
`a vehicle alternator provides electric power from a vehicle’s running engine. By
`describing that an alternator can serve as the compressor motor’s power source,
`Erdman discloses that while the vehicle is being driven, the air conditioning system
`derives its input electrical power, at least in part, from the vehicle’s alternator
`driven by the engine. Also, for the recreational vehicle embodiment, Erdman
`specifically describes that, while the vehicle is being driven, the refrigeration
`system is energized by the alternator. Id. at 13:19-23.
`
`Erdman’s disclosed compressor is a variable speed compressor, the speed of
`which is regulated to achieve a corresponding desired temperature. Id. at Abstr.:
`19-21. Erdman also discloses that maximum compressor speed corresponds to
`maximum cooling capacity. Id. at 13:51-53. The sole criterion for governing the
`operative capacity or speed of the compressor in Erdman is the desired temperature
`to be achieved.
`
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`Erdman equates compressor speed to cooling capacity:
`
`
`
`For example, on a hot, humid day, maximum motor speed (and
`
`thus capacity) would be desired to achieve satisfactory cooling and
`dehumidification. On the other hand, on a cool but humid day, the
`motor would be run at a slower speed to reduce the refrigeration
`capacity so that sufficient dehumidification may be accomplished
`without excessive cooling effect.
`
`Id. at 13:51-57.
`
`With respect to independent claim 1, Erdman does not describe running the
`compressor at a first capacity when the engine is running, and at a second capacity
`when the engine is not running.
`
`With respect to independent claim 13, Erdman does not describe running the
`compressor at a first speed when the engine is running, and at a second speed when
`the engine is not running.
`
`With respect to independent claim 17, the parties dispute whether Erdman
`describes operating its refrigeration system with stored electric power when the
`engine is not running, as a part of a method that also operates the system with at
`least electric power generated as a result of the engine running when the engine is
`running.
`
`The issues identified above are discussed below, in the context of the claims
`which require their resolution.
`
`Yoshida
`Yoshida discloses an air conditioning system for use in electric cars having
`
`an electric motor-driven compressor. Ex. 1008, Claims 1-3; ¶ 0001. Yoshida
`describes that, because an electric car uses the battery as its power supply, the
`distance it can travel depends greatly on the battery capacity. Id. at ¶ 0003:1-7.
`Yoshida further describes that, because the power supply for the electric motor-
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`driven compressor is the same battery that powers the vehicle, operating the air
`conditioning system, without restriction, based on the remaining battery capacity,
`may deplete the battery at a much faster rate than anticipated and result in the
`electric car’s running out of power before reaching the intended destination. Id. at
`¶ 0003:7-17.
`
`Yoshida discloses an electric power consumption management method that
`restricts the output of the air conditioning system based on the level of the
`remaining battery capacity. Id. at ¶ 0004. For instance, Yoshida states:
`In cases of traveling under a high thermal load while operating the air
`conditioning system without output restrictions at 3.0 KW, the travel
`distance is about 140 km; if the distance to a destination exceeds that,
`for example, the car would stop before reaching the destination. Thus,
`setting the output of the air conditioning system to 3.0 kw up to the
`point where the remaining battery capacity is 20 kwh (point A),
`setting the output to 1.5 kw up to the point where the remaining
`battery capacity is 10 kwh (point B), and setting the output to 0 when
`the remaining battery capacity goes below 10 kwh, for example, can
`allow the car to reach the destination as shown in FIG. 2.
`
`Id. at ¶ 0008:5-18. Figure 2 of Yoshida is reproduced below:
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`g e remainingetween thetionship be 2 illustrattes the relat
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`Fig.
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`bbattery cappacity and tthe reachabble travel ddistance
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`AAs is evidennt from Figgure 2, aboove, restriccting the ouutput or limmiting the
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`capacityy of the airr conditionning systemm at points
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`A and B, bbased on thhe level of f
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`en the disttance reachhable by thhe electric ccar
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`remaining battery capacity, ccan length
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`before tthe battery dies.
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`OObvious over Erdmann and Yoshhida
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`-16 as
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`CClaims 5-7,, 9, and 11
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`CClaims 5-7,, 9, 11, andd 12 each ddepend, dirrectly or inndirectly, frfrom
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`indepenndent claimm 1. Claimms 14-16 eaach dependd, directly oor indirectlly, from
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`indepenndent claimm 13.
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`16
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`
`
`Case IPR2012-00027
`Patent 7,591,303
`
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`Considering the arguments and evidence presented by the parties, we
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`conclude that in light of Yoshida’s teachings on how to conserve the power of an
`electric car’s battery by reducing the capacity of the vehicle’s compressor, it would
`have been obvious to one with ordinary skill in the art to reduce the capacity of the
`compressor of the vehicle described in Erdman, based on the level of the remaining
`battery capacity, when the compressor is driven only by the battery. The rationale
`for doing so would be the same as that disclosed in Yoshida, i.e., to lower the
`chance of completely depleting the battery, or lengthen the time until such
`depletion occurs. Because Erdman equates compressor capacity to speed, as
`discussed above, the same obviousness conclusion applies with regard to reducing
`the speed of the compressor, based on the level of the remaining battery capacity.
`The information presented in the claim chart appearing on pages 43-48 of the
`Petition is persuasive.
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`Bergstrom argues that Yoshida does not cure the deficiency of Erdman in
`not providing different capacities for the air conditioning system when the engine
`is running and when the engine is not running, because Yoshida does not tie
`capacity reduction to whether the engine is running. The argument is
`unpersuasive, because the rationale for reducing the capacity comes directly from
`Yoshida’s teaching of reducing capacity when the system is powered by a battery,
`i.e., stored electric power. It does not matter that Yoshida does not refer to
`operations with a running engine. Because the capacity is reduced when the air
`conditioning system draws power from the battery, there would be first and second
`capacities and first and second speeds of operation for the compressor. For the
`same reason, one of the two capacities would be less than the other, and one of the
`two speeds would be less than the other.
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`17
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`

`

`
`
`Case IPR2012-00027
`Patent 7,591,303
`
`
`Bergstrom argues that it would not have been obvious to modify Erdman to
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`change the capacity of its air conditioning system if the engine is not operating,
`because Erdman primarily describes a system that is particularly adapted for use in
`a portable refrigerator that requires temperature stability. The argument is
`unpersuasive. Erdman also states that its system “is particularly adapted for use as
`an air conditioning system for automobiles and recreational vehicles,” in addition
`to being particularly adapted for use as a portable refrigerating apparatus, and as a
`refrigerating apparatus for trucks or other transport vehicles. Ex. 1007, Abstr.:
`5-11.
`Bergstrom argues that it would not have been obvious to modify Erdman to
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`change the capacity of its air conditioning system if the engine is not operating,
`because Erdman discloses energizing the compressor to select its speed in
`accordance with the desired temperature. In that regard, Bergstrom notes that if
`the capacity of the compressor is reduced, Erdman will be unlikely to maintain the
`desired temperature. The argument is unpersuasive. One with ordinary skill in the
`art would have recognized that there is a trade-off between fully satisfying the
`cooling needs of the users of an air conditioning system and the need to conserve
`the electric power resource so that the air conditioning unit does not cease to
`operate earlier than anticipated. If the battery is depleted prematurely, the cooling
`needs of the user will not be satisfied whatever is the desired temperature.
`Bergstrom has not represented that exercising such trade-offs is beyond the level of
`ordinary skill in the art.
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`With regard to claims 5, 9, and 16, Bergstrom makes no additional
`argument. With regard to claims 6, 7, 11, 12, 14, and 15, which recite various
`requirements with respect to setting the compressor to operate at a certain speed in
`certain circumstances, Bergstrom asserts that Erdman refers not to setting or
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`18
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`

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`Case IPR2012-00027
`Patent 7,591,303
`
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`selecting the speed of the compressor, but merely to changing the “number of
`revolutions.” That argument is unpersuasive, because, as discussed above, Erdman
`equates compressor speed to cooling capacity. Ex. 1007, 13:51-57.
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`We regard the various “speed” limitations in these claims as being met by
`the disclosure of a corresponding “capacity” of the compressor or air conditioning
`system, and do not rely on Erdman’s disclosure of various “number of revolutions”
`to meet any limitation on speed. We agree with Bergstrom that Idle Free has not
`established that the term “number of revolutions” refers to speed.
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`Claim 7 of the ’303 patent requires its own discussion because it recites a
`“minimum speed” of operation. Specifically, it recites:
`wherein the step of operating the air conditioning system at the speed
`lower than a maximum speed when the engine is not running
`comprises the step of operating at least one of an interior compartment
`fan and a compressor of the air conditioning system at a minimum
`speed when the engine is not running.
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`Neither Idle Free nor Bergstrom has interpreted “minimum speed.” In light of the
`specification of the ’303 patent, it is clear that the term “minimum speed” is not
`used to refer to the lowest possible absolute operating speed of the compressor
`below which the compressor cannot provide an output. Rather, in the context of
`the disclosure of th