`Trials@uspto.gov
`571-272-7822 Entered: August 18, 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 IPR2015-00767
`Patent 7,455,134 B2
`____________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DeFRANCO, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`Petitioner, Ford Motor Company, filed a Petition requesting an inter
`
`partes review of claims 1, 2, 4–6, 16–20, 27, 40, 41, 43, 44, 53–55 and 57–
`60 of U.S. Patent No. 7,455,134 B2 (Ex. 1101, “the ’134 patent”). Paper 2
`(“Pet.”). Patent Owner, Paice LLC & The Abell Foundation, Inc., filed a
`Preliminary Response in both unredacted and redacted forms. Papers 11, 12
`
`
`
`Case IPR2015-00767
`Patent 7,455,134 B2
`
`(“Prelim. Resp.”).1 Patent Owner also filed a Motion to Seal. Paper 13
`(“Mot. to Seal.”). We have jurisdiction under 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`Based on the facts before us, we exercise discretion to deny review
`under 35 U.S.C. § 325(d).
`A. Related Proceedings
`The ’134 patent is involved in Paice LLC v. Ford Motor Co., No. 1-
`14-cv-00492, filed on February 19, 2014, in the United States District Court
`for the District of Maryland. Pet. 1. Petitioner twice filed an earlier Petition
`for inter partes review of the ’134 patent, but we did not institute trial. Ford
`Motor Co. v. Paice LLC & The Abell Foundation, Inc., Case IPR2014-00568
`(PTAB Sept. 8, 2014) (Paper 12), and Ford Motor Co. v. Paice LLC & The
`Abell Foundation, Inc., Case IPR2014-00852 (PTAB Nov. 20, 2014) (Paper
`11).
`
`B. The ’134 Patent (Ex. 1201)
`The ’134 patent describes a hybrid vehicle with an internal
`combustion engine, a traction motor, a starter motor, and a battery bank, all
`controlled by a microprocessor. Ex. 1201, Abs. Figure 4, reproduced
`below, shows a block diagram of a hybrid vehicle. Id. at Fig. 4.
`
`
`1 Citations are to the redacted version of Patent Owner’s Preliminary
`Response (Paper 12, “Prelim. Resp.”).
`
`2
`
`
`
`Case IPR2015-00767
`Patent 7,455,134 B2
`
`
`
`
`Figure 4 illustrates a block diagram of a hybrid vehicle.
`
`The hybrid vehicle includes two wheels 34 operable to propel the
`vehicle, traction motor 25, starting motor 21, and engine 40 coupled to
`starting motor 21. Id. Inverter/charger 27 is coupled to traction motor 25
`and inverter/charger 23 is coupled to starting motor 21. Id. Battery bank 22
`is coupled to inverter/charger 23, as well as inverter/charger 27.
`Controller 48 controls the operation of engine 40 and motors 21 and 25. Id.
`The components of the vehicle “are to be sized so that the ratio between
`battery voltage under load to peak current is at least about 2.5, and
`preferably is at least 3.5 to 4:1.” Id. at 50:5–9.
`C. Claims
`Petitioner challenges independent claim 1 and dependent claims 2, 4–
`6, 16–20, 27, and 40, which depend directly or indirectly from claim 1.
`
`3
`
`
`
`Case IPR2015-00767
`Patent 7,455,134 B2
`
`Petitioner also challenges independent claim 41 and dependent claims 43,
`44, 53–55, and 57, which depend either directly or indirectly from claim 41.
`Petitioner also challenges independent claim 58 and dependent claims 59
`and 60 which depend directly from claim 58. Claim 1 reads:
`
`1.
`A hybrid vehicle, comprising:
`
`at least two wheels, operable to receive power to propel
`said hybrid vehicle;
`
`a first alternating current (AC) electric motor, operable to
`provide power to said at least two wheels to propel said hybrid
`vehicle;
`
`a second AC electric motor;
`
`an engine coupled to said second electric motor, operable
`to provide power to said at least two wheels to propel the
`hybrid vehicle, and/or to said second electric motor to drive the
`second electric motor to generate electric power;
`(AC-DC)
`
`a
`first alternating current-direct current
`converter having an AC side coupled to said first electric motor,
`operable to accept AC or DC current and convert the current to
`DC or AC current respectively;
`
`a second AC-DC converter coupled to said second
`electric motor, at least operable to accept AC current and
`convert the current to DC;
`
`an electrical storage device coupled to a DC side of said
`AC-DC converters, wherein the electrical storage device is
`operable to store DC energy received from said AC-DC
`converters and provide DC energy to at least said first AC-DC
`converter for providing power to at least said first electric
`motor; and
`
`a controller, operable to start and stop the engine to
`minimize fuel consumption;
`
`wherein a ratio of maximum DC voltage on the DC side
`of at least said first AC-DC converter coupled to said first
`electric motor to current supplied from said electrical storage
`device to at least said first AC-DC converter, when maximum
`current is so supplied, is at least 2.5.
`
`Id. at 56:43–57:7.
`
`4
`
`
`
`Case IPR2015-00767
`Patent 7,455,134 B2
`
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1, 2, 4–6, 16–20, 27, 40, 41, 43, 44,
`53–55 and 57–60 of the ’134 patent are unpatentable under 35 U.S.C. § 103
`based on the following specific grounds:
`Reference[s]
`
`Basis Challenged Claim(s)
`1, 2, 4–6, 19, 20, 27,
`40, 41, 43, 44, 57,
`and 58
`16–18, 53–55,
`and 60
`59
`
`§ 103
`
`§ 103
`
`§ 103
`
`’455 PCT publication2 and
`Severinsky3
`’455 PCT publication, Severinsky,
`and Furutani4
`’455 PCT publication, Severinsky,
`and Sasaki5
`
`
`II. ANALYSIS
`A. Exercising Discretion to Deny Institution
`An issue in this proceeding is whether we should exercise our
`discretion and deny institution under 35 U.S.C. § 325(d). Pet. 2–4; Prelim.
`Resp. 10–20. That section states, in relevant part, that “[i]n determining
`whether to institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account whether, and reject the
`petition or request because, the same or substantially the same prior art or
`arguments previously were presented to the Office.”
`
`
`2 PCT International Publication Number WO 00/015455, published Mar. 23,
`2000 (Ex. 1203) (“the ’455 PCT publication”).
`3 U.S. Patent No. 5,343,970, issued Sept. 6, 1994 (Ex. 1206) (“Severinsky”).
`4 U.S. Patent No. 5,495,906, issued Mar. 5, 1996 (Ex. 1205) (“Furutani”).
`5 S. Sasaki et al., Toyota’s Newly Developed Electric-Gasoline Engine
`Hybrid Powertrain System, 14th International Electronic Vehicle Symposium
`and Exposition (Dec. 1997) (Ex. 1207) (“Sasaki”).
`
`5
`
`
`
`Case IPR2015-00767
`Patent 7,455,134 B2
`
`
`This is Petitioner’s third attempt challenging claims of the ’134
`patent. We denied institution in two earlier cases, and, thus, did not institute
`trial on any of the challenged claims of the ’134 patent. See Ford Motor Co.
`v. Paice LLC, Case IPR2014-00568, Paper 12 (PTAB Sept. 8, 2014), and
`Ford Motor Co. v. Paice LLC, Case IPR2014-00852, Paper 11 (PTAB Nov.
`20, 2014).
`In IPR2014-00568, Petitioner challenged claims 1–3, 5, 6, 19, 20, 26,
`27, 40, 58, and 62, and in IPR2014-00852, Petitioner challenged claims 1–3,
`5, 6, 19, 27, 40, and 58. In both cases, Petitioner relied on the disclosure of
`the inventor’s own earlier patent or parent patent to meet the requirement of
`every challenged claim of a maximum DC voltage to current supplied to be
`at least 2.5. See IPR2014-00568, Paper 12, 12–14; IPR2014-00852, Paper
`11, 9–10. In other words, Petitioner relied on Patent Owner’s own work to
`meet the requirement of a maximum DC voltage to current supplied to be at
`least 2.5, which we held not to be permissible. Id.
`Several months after the last of our two decisions denying institution,
`Petitioner filed the instant Petition challenging several claims already twice
`challenged, along with newly challenged claims. In the Petition, Petitioner
`relies on Severinsky for its description of a maximum DC voltage to current
`supplied to be at least 2.5 limitation required by every challenged claim.
`Pet. 28–29. The base reference is the same as the base reference Petitioner
`relied on in IPR2014-00568—the ’455 PCT publication. Severinsky,
`contrary to Petitioner’s assertions made on page 2 of the Petition that it is a
`newly relied on prior art reference, previously was relied on in explaining
`the state of the art, along with features known to those skilled in the art at the
`time of the invention, including the description in Severinsky of a preference
`
`6
`
`
`
`Case IPR2015-00767
`Patent 7,455,134 B2
`
`for high voltage/low current hybrid systems. IPR2014-00568, Paper 1, 19–
`20. Although Petitioner includes two additional references (Furutani and
`Sasaki) for some of the challenged dependent claims, Petitioner relies on
`’455 PCT publication and Severinsky to meet the majority of claim terms.
`For all of these reasons, we find that the prior art is substantially the same as
`previously presented in at least IPR2014-00568.
`We also have considered Petitioner’s arguments that because it
`presents a new set of claims, e.g., consisting of previously challenged
`claims, but also including newly challenged claims, we must consider the
`Petition. Pet. 2, 4. We are not persuaded by this argument because the
`express language of 35 U.S.C. § 325(d) does not mention claims as being a
`factor in deciding whether to institute trial. Rather, 35 U.S.C. § 325(d) is
`concerned only with whether a petition presents the “same or substantially
`the same prior art or arguments.” Emphasis added.
`Here, the newly challenged or presented claims appear to us to be of
`similar scope as previously challenged claims. For example, Petitioner
`contends that newly presented independent claim 41, with the exception of
`two modifications, “duplicates the claim limitations in independent claim 1.”
`Pet. 38. The two modifications are not explained to be significant, insofar as
`claim 41 is concerned. Id. Moreover, based on the record before us,
`Petitioner does not persuade us that the arguments previously presented with
`respect to claim 1 are not substantially the same as those presented for newly
`presented independent claim 41. We determine them to be substantially the
`same. Compare Pet. 24–29, with IPR2014-00568, Paper 1, 19, 20, 23–27,
`34–38.
`
`7
`
`
`
`Case IPR2015-00767
`Patent 7,455,134 B2
`
`
`Challenged claims 43, 44, and 57 depend from claim 41, and are
`described as duplicative of claims 5, 6, and 27, claims previously
`challenged. See Pet. 41. Petitioner has not explained why the arguments
`previously presented with respect to dependent claims 43, 44, and 57 are not
`substantially the same as those previously presented for claims 5, 6, and 27.
`They appear to be substantially the same. Compare Pet. 36, 37, 41, with
`IPR2014-00568, Paper 1, 32, 33.
`Newly presented claims 16–18, 53–55, 59, and 60 appear to be similar
`in scope to at least previously challenged claims 40 and 58. For example,
`based on the record before us, Petitioner has not explained why the
`arguments presented with respect to claims 16–18, 53–55, and 60 are not
`substantially the same as those previously presented for claim 40. We
`determine them to be substantially the same. Compare, e.g., Pet. 47, 48,
`with IPR2014-00568, Paper 1, 33, 34. Claims 1–3, 5, 6, 19, 20, 26, 27, 40,
`58, and 62 were all previously challenged twice before, and we have
`determined that the arguments presented previously in at least the IPR2014-
`00568 Petition are substantially the same as presented in the instant Petition.
`We also have considered Petitioner’s argument that the Board did not
`have the opportunity to fully consider the impact of the ’455 PCT
`Publication on patentability. Pet. 2. We are not persuaded by this argument
`as we did consider the ’455 PCT Publication in rendering our decision in
`IPR2014-00568. IPR2014-00568, Paper 12, 10–14.
`We also are not persuaded by Petitioner’s argument that it could not
`have presented the challenges to the claims before us now in one of its
`previous petitions, because of page limits. Pet. 3. The Petition filed in at
`least IPR2014-00568 was 42 pages long, 18 pages shy of the 60 page limit.
`
`8
`
`
`
`Case IPR2015-00767
`Patent 7,455,134 B2
`
`It appears to us that much of what is presented in the instant Petition could
`have been presented in at least IPR2014-00568. Along similar lines, we are
`not persuaded by Petitioner’s argument that multiple petitions were
`necessary because Patent Owner has charged Ford with infringing five
`patents containing over two hundred and seventy-five claims. Id. Petitioner
`does not explain, however, how that representation is relevant to this case,
`involving the ’134 patent. That Patent Owner is asserting infringement of
`other claims from other patents would appear to bear little on the facts of
`this case. In contrast, Petitioner does not explain how many and which of
`the ’134 patent claims it is being charged with infringing. Such information
`would be relevant.
`Petitioner argues that it could not have foreseen that its reliance on the
`Patent Owner’s earlier disclosure in combination with other prior art in
`challenging the ’134 claims would lead to a denial of the previous petitions.
`Id. 2–3. It is fundamental patent law that claims cannot be challenged as
`unpatentable under 35 U.S.C. §§ 102 or 103 based on the inventor’s own
`work, known only to them. See, e.g., IPR2014-00568, Paper 12, 14;
`IPR2014-00852, Paper 11, 10. That Petitioner took such a position in the
`two previous cases does not persuade us to exercise our discretion to now
`consider yet a third petition on the merits.
`For all of the above reasons, we exercise our discretion to deny
`institution.
`
`B. Patent Owner Motion to Seal
`Patent Owner moves to seal the unredacted Patent Owner Preliminary
`
`Response (Paper 11) and Exhibit 2002. Paper 13. In rendering our decision
`not to institute trial, we found it unnecessary to rely on the information
`
`9
`
`
`
`Case IPR2015-00767
`Patent 7,455,134 B2
`
`Patent Owner seeks to maintain as sealed. For these reasons, we expunge
`the unredacted version of the Patent Owner Preliminary Response and
`Exhibit 2002. Patent Owner’s motion to seal is dismissed as moot.
`III. CONCLUSION
`For the foregoing reasons, we determine that the Petition presents
`substantially the same prior art and arguments previously presented, and,
`taking into account the particular facts of this case, we exercise our
`discretion to deny institution of review under 35 U.S.C. § 325(d).
`IV. ORDER
`Upon consideration of the record before us, it is
`
`ORDERED that the Petition is denied and no trial is instituted;
`
`FURTHER ORDERED that Patent Owner’s motion to seal is
`
`dismissed; and
`
`FURTHER ORDERED that Patent Owner’s unredacted preliminary
`response (Paper 11) and Exhibit 2002 be expunged from the record.
`
`
`10
`
`
`
`Case IPR2015-00767
`Patent 7,455,134 B2
`
`FOR PETITIONER:
`Frank A. Angileri
`Sangeeta G. Shah
`Michael D. Cushion
`FPGP0106IPR3@brookskushman.com
`fangileri@brookskushman.com
`sshah@brookskushman.com
`mcushion@brookskushman.com
`
`Lissi Mojica
`Kevin Greenleeaf
`iptdocketchi@dentons.com
`
`FOR PATENT OWNER:
`
`Timothy W. Riffe
`Kevin E. Greene
`Ruffin B. Cordell
`Linda L. Kordziel
`Brian J. Livedalen
`riffe@fr.com
`greene@fr.com
`IPR36351-0012IP3@fr.com
`
`11