Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: March 12, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01415
`Patent 8,214,097 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2014-01415
`Patent 8,214,097 B2
`
`
`I. INTRODUCTION
`
`Ford Motor Company (“Ford”) filed a Petition (“Pet.”) for inter partes
`
`review of U.S. Patent No. 8,214,097 B2 (“the ’097 patent”). Paper 2. The
`
`Petition challenges the patentability of claims 1–6, 8–16, 18–26, 28–30, and
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`34 under 35 U.S.C. § 103. Paice LLC and The Abell Foundation, Inc.
`
`(“Paice”), the owner of the ’097 patent, filed a Preliminary Response
`
`(“Prelim. Resp.” ). Paper 9. After considering the Petition and Preliminary
`
`Response, we determine that Ford has demonstrated a “reasonable
`
`likelihood” that the challenged claims are unpatentable. 35 U.S.C. § 314.
`
`Accordingly, on behalf of the Director, we institute an inter partes review of
`
`challenged claims 1–6, 8–16, 18–26, 28–30, and 34. 37 C.F.R. § 42.4(a).
`
`II. BACKGROUND
`
`The ’097 Patent1
`
`The ’097 patent describes a hybrid vehicle with an internal
`
`A.
`
`
`
`combustion engine, an electric motor, and a battery bank, all controlled by a
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`microprocessor that directs torque transfer between the engine, the motor,
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`and the drive wheels of the vehicle. Ex. 1101, 16:61–17:5, Fig. 4. The
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`microprocessor compares the vehicle’s torque requirements and the engine’s
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`torque output against a predefined setpoint (SP) and uses the results of the
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`comparison to control the vehicle’s mode of operation, e.g., straight-electric,
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`engine-only, or hybrid. Id. at 36:39–37:21, 39:27–59. The microprocessor
`
`
`
`1 The ’097 patent is the subject of a co-pending case, Paice, LLC v. Ford
`Motor Company, No. 1:14-cv-492, filed Feb. 19, 2014, in the U.S. District
`Court for the District of Maryland. Pet. 1.
`2
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`

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`IPR2014-01415
`Patent 8,214,097 B2
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`utilizes a hybrid control strategy that operates the engine only in a range of
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`high fuel efficiency, which occurs when the torque required to drive the
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`vehicle reaches a setpoint equal to at least 30% of the engine’s maximum
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`torque output (MTO). Id. at 20:37–45; see also id. at 13:48–50 (“the engine
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`is never operated at less than 30% of MTO, and is thus never operated
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`inefficiently”). The hybrid control strategy also limits the rate of change of
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`the engine’s torque output so that combustion is maintained at or near a
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`stoichiometric fuel:air ratio. Id. at 38:62–39:14. Preserving stoichiometric
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`combustion throughout the engine’s operation improves fuel efficiency and
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`reduces pollutant emissions of the vehicle. Id.
`
`B.
`
`Challenged Claims
`
`Of the challenged claims, claims 1, 11, 21, and 30 are independent.
`
`Claim 1 is illustrative:
`
`A method for controlling a hybrid vehicle, said
`1.
`
`vehicle comprising a battery, a controller, wheels, an internal
`combustion engine and at least one electric motor, wherein both
`the internal combustion engine and motor are capable of
`providing torque to the wheels of said vehicle, and wherein
`said engine has an inherent maximum rate of increase of output
`torque, said method comprising the steps of:
`
`operating the internal combustion engine of the hybrid
`vehicle to provide torque to operate the vehicle;
`
`operating said at least one electric motor to provide
`additional torque when the amount of torque provided by said
`engine is less than the amount of torque required to operate the
`vehicle; and
`
`employing said controller to control the engine such that
`a rate of increase of output torque of the engine is limited to
`less than said inherent maximum rate of increase of output
`
`3
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`IPR2014-01415
`Patent 8,214,097 B2
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`torque, and wherein said step of controlling the engine such that
`the rate of increase of output torque of the engine is limited is
`performed such that combustion of fuel within the engine
`occurs at a substantially stoichiometric ratio; and comprising
`the further steps of:
`
`operating said internal combustion engine to provide
`torque to the hybrid vehicle when the torque required to operate
`the hybrid vehicle is between a setpoint SP and a maximum
`torque output (MTO) of the engine, wherein the engine is
`operable to efficiently produce torque above SP, and wherein
`SP is substantially less than MTO;
`
`operating both the at least one electric motor and the
`engine to provide torque to the hybrid vehicle when the torque
`required to operate the hybrid vehicle is more than MTO; and
`
`operating the at least one electric motor to provide torque
`to the hybrid vehicle when the torque required to operate the
`hybrid vehicle is less than SP.
`
`Ex. 1101, 56:47–57:14.
`
`C.
`
`Asserted Grounds
`
`
`
`Ford challenges the patentability of claims 1–6, 8–16, 18–26, 28–30,
`
`and 34 of the ’097 patent based on the following grounds of unpatentability.
`
`Pet. 4. Ford also proffers the declaration testimony of Dr. Jeffrey L. Stein
`
`in furtherance of these grounds. Ex. 1102.
`
`Ground
`
`Basis
`
`Challenged Claims
`
`§ 103
`
`Severinsky2 and Anderson3
`
`1, 2, 5, 6, 8–12, 15, 16,
`18–22, 25, 26, 28, 29
`
`
`
`2 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1104).
`3 C. Anderson & E. Pettit, The Effects of APU Characteristics on the Design
`of Hybrid Control Strategies for Hybrid Electric Vehicles, SAE TECHNICAL
`PAPER 950493 (1995) (Ex. 1105).
`
`4
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`IPR2014-01415
`Patent 8,214,097 B2
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`Ground
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`Basis
`
`Challenged Claims
`
`§ 103
`
`§ 103
`
`Severinsky, Anderson, and
`Yamaguchi4
`Severinsky, Anderson, Yamaguchi,
`and Takaoka5
`
`§ 103
`
`Severinsky and Takaoka
`
`3, 13, 23
`
`4, 14, 24
`
`30, 34
`
`A.
`
`Claim Construction
`
`III. ANALYSIS
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in the context of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); accord In re Cuozzo Speed Techs., No.
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`2014-1301, 2015 WL 448667, at *6 (Fed. Cir. Feb. 4, 2015) (holding that
`
`the PTO “properly adopted” the broadest reasonable interpretation standard
`
`for IPR proceedings). Ford proposes a construction for three claim terms,
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`namely, “rate of change,” “setpoint,” and “road load.” Pet. 13–19. Based on
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`our review of the record, however, no particular claim term requires an
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`express construction for purposes of this preliminary proceeding.6
`
`
`
`4 U.S. Patent No. 5,865,263, iss. Feb. 2, 1999 (Ex. 1106).
`5 T. Takaoka et al., A High-Expansion Ratio Gasoline Engine for the Toyota
`Hybrid System, Toyota Technical Review, vol. 47, no. 2 (Apr. 1998) (Ex.
`1107).
`6 A “Preliminary Proceeding,” according to our rules, “begins with the filing
`of a petition for instituting a trial and ends with a written decision as to
`whether a trial will be instituted.” 37 C.F.R. § 42.2.
`5
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`IPR2014-01415
`Patent 8,214,097 B2
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`B.
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`
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`Asserted Grounds of Unpatentability
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`1.
`
`Claims 1, 2, 5, 6, 8–12, 15, 16, 18–22, 25, 26, 28, and 29
`
`Ford argues that independent claims 1, 11, and 21 would have been
`
`obvious over the combined teachings of Severinsky and Anderson. Pet. 20–
`
`45. Severinsky describes a control strategy for a hybrid vehicle in which the
`
`internal combustion engine and electric motor, separately or simultaneously,
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`apply torque to the wheels of the vehicle in a manner that realizes
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`“maximum fuel efficiency.” Ex. 1104, 5:31–36. In order to optimize fuel
`
`efficiency, Severinsky discloses a controller that operates 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). Ford’s declarant, Dr. Stein, testifies that Severinsky’s
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`disclosure of a lower limit, or setpoint, of 60% is “substantially less than
`
`MTO,” thereby meeting the “setpoint” limitation of independent claims 1,
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`11, and 21. Ex. 1102 ¶¶ 451–453. We find the testimony of Ford’s
`
`declarant credible at this stage.
`
`
`
`Ford acknowledges, however, that Severinsky does not explicitly
`
`disclose limiting the rate of increase of the engine’s torque output “such that
`
`combustion of fuel within the engine occurs at a substantially stoichiometric
`
`ratio,” as recited by claims 1, 11, and 21. Pet. 20, 23, 34. Although
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`Severinsky may lack this feature, Ford points to Anderson as teaching a
`
`hybrid control strategy that monitors the “speed of the [engine’s] transient”
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`and “only allows slow transients” in order that a “stoichiometric air to fuel
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`ratio is maintained.” Id. at 23–24 (citing Ex. 1105 at 7). Anderson
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`6
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`IPR2014-01415
`Patent 8,214,097 B2
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`expressly describes the engine’s “transient capabilities” in terms of
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`“combinations of speed and torque” and correlates maintenance of a
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`“stoichiometric air to fuel ratio” with maximizing fuel efficiency and
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`minimizing emissions. Id. (emphasis added).
`
`Ford argues that combining the hybrid mode configurations of
`
`Severinsky with the “transient” control strategy taught by Anderson to
`
`improve stoichiometric air-fuel ratio would have been obvious to a skilled
`
`artisan because of the compatibility of the two hybrid systems. Pet. 45
`
`(citing Ex. 1102 ¶ 545). On the current record, we agree with Ford’s line of
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`reasoning and credit Ford’s declarant that the combination of Anderson’s
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`transient control algorithm with Severinsky’s control algorithms would have
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`required only “slight modifications.” See Ex. 1102 ¶¶ 549–550. Thus, after
`
`considering Ford’s evidence and analysis, we determine that Ford has
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`demonstrated a reasonable likelihood that claims 1, 11, and 21 are
`
`unpatentable for obviousness over Severinsky and Anderson.
`
`We also are persuaded by Ford’s evidence and analysis with respect to
`
`the challenged claims depending from claims 1, 11, and 21. See Pet. 37–44.
`
`For example, with respect to claim 2, Anderson expressly teaches that “O2
`
`levels can be sensed” in the exhaust stream to maintain the stoichiometric
`
`ratio. Ex. 1105 at 7. With respect to claims 8, 16, 18, 26, as discussed
`
`above, 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. 1104, 15:1–10, 16:67–17:15. Finally, as to claims 9,
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`10, 19, 20, 28, and 29, Severinsky discloses that the battery supplies energy
`
`7
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`IPR2014-01415
`Patent 8,214,097 B2
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`to the motor at voltages “between 500 and 1500 volts” and “less than 75
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`amperes.” Id. at 19:39–49. Thus, based on the current record, we determine
`
`that Ford has demonstrated a reasonable likelihood that dependent claims 2,
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`5, 6, 8–10, 12, 15, 16, 18–20, 22, 25, 26, 28, and 29 would have been
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`obvious over Severinsky and Anderson.
`
`
`
`2.
`
`Claims 3, 13, and 23
`
`Ford argues that claims 3, 13, and 23 would have been obvious over
`
`Severinsky, Anderson, and Yamaguchi. Pet. 45–48. Claims 3, 13, and 23
`
`depend from claims 1, 11, and 21, respectively, and add the step of rotating
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`the engine at “at least 300 rpm” so that “the engine is heated” prior to
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`starting. Yamaguchi teaches high-speed engine rotation, i.e., 600 rpm, prior
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`to ignition. Ex. 1106, 8:62–65, Figs. 3, 8. And Ford’s declarant, Dr. Stein,
`
`explains that Yamaguchi’s high-speed engine rotation generates friction and
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`heat prior to ignition with the specific goal of avoiding cold start emissions
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`that reduce fuel efficiency. Ex. 1102 ¶¶ 553–560. After considering Ford’s
`
`evidence and analysis, we are persuaded that a skilled artisan would have
`
`been led to implement Yamaguchi’s cold-start strategy of rotating the engine
`
`at high-speed as part of the engine control strategy of Severinsky in order to
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`maximize fuel efficiency and reduce undesirable emissions. Thus, we
`
`determine that Ford has demonstrated a reasonable likelihood that claims 3,
`
`13, and 23 are unpatentable over Severinsky, Anderson, and Yamaguchi.
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`8
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`IPR2014-01415
`Patent 8,214,097 B2
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`3.
`
`Claims 4, 14, and 24
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`Ford argues that claims 4, 14, and 24 would have been obvious over
`
`Severinsky, Anderson, Yamaguchi, and Takaoka.7 Pet. 48–50. Claims 4,
`
`14, and 24 depend, respectively, from claims 3, 13, and 23, and add the step
`
`of supplying fuel and air to the engine at a ratio of “no more than 1.2 of the
`
`stoichiometric ratio for starting the engine.” Takaoka teaches that, in order
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`for a hybrid system to lower emission levels and optimize fuel consumption,
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`the engine should “operate with λ = 1 over its entire range.” Ex. 1107 at 2.
`
`
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`Ford’s declarant testifies a skilled artisan would know that “a λ value
`
`of 1 . . . corresponds [to] a air-fuel ratio of 1.0 of the stoichiometric ratio”
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`and that operating the engine at this ratio “over its entire range” necessarily
`
`includes engine starts. Ex. 1102 ¶¶ 601–603. We credit the testimony of
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`Ford’s declarant, which is corroborated by the ’097 patent’s disclosure of
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`“lambda” as indicative of stoichiometric ratio. Ex. 1101, 39:10–12. After
`
`
`
`7 Paice argues that Ford has not shown that Takaoka was ever disseminated
`to the public. Prelim. Resp. 5–9. Takaoka has a date of “Apr. 1998” printed
`on each odd-numbered page and has the appearance of an official
`publication. Ex. 1107. Moreover, it is cited on the face of Paice’s related
`patent, U.S. Patent No. 7,104,347 B2, as a “Publication” bearing the same
`date. Ex. 1125 at 5. At this stage, we determine that Ford has shown
`sufficiently that Takaoka was published as of April 1998. Nonetheless, we
`recognize that the evidence of the date, as it stands now, may be hearsay. In
`that regard, we direct the parties to 37 C.F.R. § 42.64(b)(1), which addresses
`the time for objecting to evidence submitted during a preliminary proceeding
`once trial has been instituted, and 37 CFR § 42.123, which addresses the
`time for submitting supplemental information relevant to a challenge on
`which trial has been instituted.
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`9
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`IPR2014-01415
`Patent 8,214,097 B2
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`considering Ford’s evidence and analysis, we are persuaded at this stage that
`
`the modification of Severinsky’s control algorithms to include Takaoka’s
`
`stoichiometric operating scheme would have been obvious and well within
`
`the capability of a skilled artisan. Thus, on the current record, we determine
`
`that Ford has demonstrated a reasonable likelihood that claims 4, 14, and 24
`
`are unpatentable over Severinsky, Anderson, Yamaguchi, and Takaoka.
`
`
`
`
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`4.
`
`Claims 30 and 34
`
`Ford challenges claims 30 and 34 on the ground that they would have
`
`been unpatentable as obvious over Severinsky and Takaoka.8 Pet. 50–59.
`
`Acknowledging that Severinsky may not disclose limiting the rate of change
`
`of the engine’s torque output to achieve stoichiometric combustion, as
`
`recited by claim 30, Ford points to Takaoka’s teaching of a hybrid control
`
`strategy that “reduce[s] quick engine transients in engine load so that the air-
`
`fuel ratio can be stabilized easily.” Pet. 51, 53 (citing Ex. 1107 at 5–6). And
`
`as Ford’s declarant explains, the slowing down of transients in engine load is
`
`simply another way of saying that the rate of change of engine torque is
`
`controlled to maintain combustion at a stoichiometric ratio. Ex. 1102 ¶ 666.
`
`
`
`8 Paice argues that this ground is “cumulative” of Ford’s earlier challenge
`against claim 30 in a related IPR. Prelim. Resp. 10–12. We disagree as this
`ground also includes claim 34, which is not at issue in the earlier IPR on
`which trial was instituted. As such, we exercise our discretion to institute on
`this ground even though there may be some overlap with our prior institution
`against claim 30, the limitations of which are incorporated into claim 34 at
`issue here.
`
`10
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`IPR2014-01415
`Patent 8,214,097 B2
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`After considering Ford’s evidence and analysis, we are persuaded that
`
`modifying the hybrid control strategy of Severinsky to incorporate the
`
`additional strategy of reducing quick transients in engine load, as taught by
`
`Takaoka, would have been obvious to a skilled artisan because both
`
`Severinsky and Takaoka are concerned with improving stoichiometric
`
`combustion in hybrid vehicles. See Pet. 45 (citing Ex. 1102 ¶ 545). We are
`
`also persuaded by Ford’s evidence and analysis with respect to claim 34,
`
`which depends from claim 30. See Pet. 56–59. Thus, on the current record,
`
`we determine that Ford has demonstrated a reasonable likelihood that claims
`
`30 and 34 would have been unpatentable as obvious over Severinsky and
`
`Takaoka.
`
`IV. CONCLUSION
`
`
`
`On the current record, Ford has demonstrated a reasonable likelihood
`
`of proving that the challenged claims would have been obvious over
`
`Severinsky and variant combinations of Anderson, Yamaguchi, and
`
`Takaoka. As such, we institute an inter partes review of claims 1–6, 8–16,
`
`18–26, 28–30, and 34 of the ’097 patent. Our decision to institute acts as a
`
`preliminary measure of Ford’s evidence as having enough merit to take the
`
`case to trial.9
`
`
`
`9 Senator Jon Kyl remarked that the “reasonable likelihood” threshold
`imposed by 35 U.S.C. § 314(a) “is currently used in evaluating whether a
`party is entitled to a preliminary injunction, and effectively requires the
`petitioner to present a prima facie case justifying a rejection of the claims in
`the patent.” 157 CONG. REC. S1375 (daily ed. Mar. 8, 2011).
`11
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`IPR2014-01415
`Patent 8,214,097 B2
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`For the foregoing reasons, it is
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`V. ORDER
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review
`
`of claims 1–6, 8–16, 18–26, 28–30, and 34 of the ’097 patent is instituted on
`
`the grounds of obviousness under 35 U.S.C. § 103 asserted in the Petition;
`
`and
`
`
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4, inter partes review of the ’097 patent shall commence on the
`
`entry date of this Order, and notice is hereby given of the institution of a
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`trial.
`
`
`
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`12
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`IPR2014-01415
`Patent 8,214,097 B2
`
`
`FOR PETITIONER:
`
`Sangeeta G. Shah
`Frank A. Angileri
`Michael D. Cushion
`Andrew B. Turner
`BROOKS KUSHMAN P.C.
`FPGP0110IPR2@brookskushman.com
`
`Frank A. Angileri
`John E. Nemazi
`John P. Rondini
`Erin K. Bowles
`BROOKS KUSHMAN P.C.
`FPGP0104IPR3@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
`FISH & RICHARDSON P.C.
`riffe@fr.com
`IPR36351-0012IP1@fr.com
`
`
`13
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