Ford Motor Companyv.Paice LLC

Patent Trial and Appeal Board

Mar 10, 2016

13065704 (P.T.A.B. Mar. 10, 2016)

Trials@uspto.gov Paper 30
571-272-7822 Entered: March 10, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FORD MOTOR COMPANY,
Petitioner,

v.

PAICE LLC & THE ABELL FOUNDATION, INC.,
Patent Owner.
____________

Case IPR2014-01415
Patent 8,214,097 B2
____________

Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
CARL M. DEFRANCO, Administrative Patent Judges.

DEFRANCO, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
Paice LLC & The Abell Foundation, Inc. (collectively, “Paice”) are
the owners of U.S. Patent No. 8,214,097 B2 (“the ’097 patent”). Ford Motor
Company (“Ford”) filed a Petition (Paper 3, “Pet.”) for inter partes review
of the ’097 patent, challenging the patentability of claims 1–6, 8–16, 18–26,
28–30, and 34 under 35 U.S.C. § 103. In a preliminary proceeding, we
instituted trial because Ford demonstrated a reasonable likelihood that it
would prevail in proving unpatentability of the challenged claims. Once
trial was instituted, Paice filed a Patent Owner Response (Paper 21, “PO
Resp.”), and Ford followed with a Reply (Paper 25, “Reply”). The parties
waived oral argument here, choosing instead to rely on arguments presented
during a prior, consolidated hearing conducted in several related
proceedings, namely, IPR2014-00570, -571, -579, -875, -884, and -904.1
Pursuant to our jurisdiction under 35 U.S.C. § 6(c), we conclude that Ford
has proven, by a preponderance of the evidence, that the challenged claims
are unpatentable.
II. BACKGROUND
A. Related Cases
The instant Petition challenges a claim of the ’097 patent that was
adjudicated previously in IPR2014-00570 (“the -570 proceeding”), only on
different grounds. Specifically, that prior proceeding led to final written
decision that claim 30 is unpatentable under 35 U.S.C. § 103, along with
other claims of the ’097 patent. 2015 WL 5782083 (PTAB Sept. 28, 2015).
We granted institution of trial in the instant proceeding in March 2015, well
before our final written decision in the -570 proceeding.

1 Transcripts have been entered into the record in those earlier proceedings.
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The ’097 patent is also the subject of co-pending district court actions,
including Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md.), filed
Feb. 19, 2014, and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
(D. Md.), filed Feb. 16, 2012. Pet. 1; PO Resp. 4 (referencing the district
courts’ claim constructions).
B. The ’097 Patent
The ’097 patent describes a hybrid vehicle with an internal
combustion engine, an electric motor, and a battery bank, all controlled by a
microprocessor that controls the direction of torque transfer between the
engine, the motor, and the drive wheels of the vehicle. Ex. 1101, 16:61–
17:5, Fig. 4. The microprocessor monitors the vehicle’s instantaneous
torque requirements, also known as “road load (RL),” to determine whether
the engine, the electric motor, or both, will be used to propel the vehicle. Id.
at 11:50–52. Aptly, the ’097 patent describes the vehicle’s various modes of
operation in terms of an engine-only mode, an all-electric mode, or a hybrid
mode. Id. at 35:14–36:4, 36:39–37:22.
As summarized in the ’097 patent, the microprocessor selects the
appropriate mode of operation “in response to evaluation of the road load,
that is, the vehicle’s instantaneous torque demands and input commands
provided by the operator of the vehicle.”2 Id. at 17:16–21. “[T]he
microprocessor can effectively determine the road load by monitoring the
response of the vehicle to the operator’s command for more power.” Id. at
36:57–64. “[T]he torque required to propel the vehicle [i.e., road load]

2 The ’097 patent contrasts the claimed invention to prior control strategies
“based solely on speed,” which are “incapable of responding to the
operator’s commands, and will ultimately be unsatisfactory.” Ex. 1101,
13:24–28.
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varies as indicated by the operator’s commands.” Id. at 37:23–25. For
example, the microprocessor “monitors the rate at which the operator
depresses pedals [for acceleration and braking] as well as the degree to
which [the pedals] are depressed.” Id. at 26:59–27:4. These operator input
commands are provided to the microprocessor “as an indication that an
amount of torque” from the engine “will shortly be required.” Id. at 27:6–
22.
The microprocessor then compares the vehicle’s torque requirements
against a predefined “setpoint (SP)” and uses the results of the comparison
to determine the vehicle’s mode of operation. Id. at 36:39–37:21, 39:27–59.
The microprocessor utilizes a hybrid control strategy that runs the engine
only in a range of high fuel efficiency, such as when the torque required to
drive the vehicle, or road load (RL), reaches a setpoint (SP) of
approximately 30% of the engine’s maximum torque output (MTO). Id. at
20:37–45, 36:39–59; see also id. at 13:48–50 (“the engine is never operated
at less than 30% of MTO, and is thus never operated inefficiently”).
The microprocessor also limits the rate of increase of the engine’s
torque output so that combustion of fuel occurs at a substantially
stoichiometric air-fuel ratio and utilizes the electric motor to meet any
shortfall in torque required to operate the vehicle in response to the
operator’s command. See, e.g., id. at 27:31–35, 29:63–30:12, 37:2–6,
38:62–39:14. Other operating parameters may also play a role in the
microprocessor’s choice of the vehicle’s mode of operation, such as the
battery’s state of charge and the operator’s driving history over time. Id. at
19:40–47; see also id. at 36:34–38 (“according to one aspect of the
invention, the microprocessor 48 controls the vehicle’s mode of operation at
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any given time in dependence on ‘recent history,’ as well as on the
instantaneous road load and battery charge state”). According to the ’097
patent, this microprocessor control strategy maximizes fuel efficiency and
reduces pollutant emissions of the hybrid vehicle. Id. at 15:38–41.
C. The Challenged Claims
Of the challenged claims, claims 1, 11, 21, and 30 are independent.
Claim 1 is illustrative:
1. A method for controlling a hybrid vehicle, said
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
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;

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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.
D. The Instituted Grounds
In the preliminary proceeding, we instituted trial because Ford made a
threshold showing of a “reasonable likelihood” that:
(1) claims 1, 2, 5, 6, 8–12, 15, 16, 18–22, 25, 26, 28, and
29 were unpatentable as obvious over Severinsky3 and
Anderson4;

(2) claims 3, 13, and 23 were unpatentable as obvious
over Severinsky, Anderson, and Yamaguchi5;

(3) claims 4, 14, and 24 were unpatentable as obvious
over Severinsky, Anderson, Yamaguchi, and Takaoka6; and

(4) claims 30 and 34 were unpatentable as obvious over
Severinsky and Takaoka.

Dec. to Inst. 11–12. We now decide whether Ford has proven the
unpatentability of these same claims by a “preponderance of the evidence.”
35 U.S.C. § 316(e).

3 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1104, “Severinsky”).
4 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, “Anderson”).
5 U.S. Patent No. 5,865,263, iss. Feb. 2, 1999 (Ex. 1106, “Yamaguchi”).
6 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, “Takaoka”).
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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). Ford proposes a
construction for three claim terms, namely, “rate of change,” “setpoint,” and
“road load.” Pet. 13–19. Paice takes issue with Ford’s proposed
construction of “setpoint,” and is silent on the other two terms. PO Resp. 3–
7. We address all three terms, beginning with the parties’ dispute over the
meaning of “setpoint.”
1. “Setpoint” or “SP”
The term “setpoint” or “SP” is found in independent claims 1, 11, and
21, as well as dependent claims 8, 18, and 34. Ford proposes that “setpoint”
be construed, in the context of the claims, as a “predetermined torque value.”
Pet. 15, 17. In that regard, Ford correctly notes that the claims compare the
setpoint against a torque value. Id. at 15–16. For example, claims 1 and 11
speak of “setpoint” or “SP” as being the lower limit at which the engine can
produce torque efficiently, i.e., “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.”7 Ex. 1101, 57:1–6, 58:11–16 (emphases added). Claim
21 similarly compares the setpoint “SP” against the torque required to propel
the vehicle “RL.” Id. at 59:7–11. These express recitations suggest that

7 Paice’s declarant, Mr. Neil Hannemann, similarly testified that under the
“most straightforward” approach for the claimed “comparison,” the “setpoint
is a torque value.” Ex. 1132, 79:16–80:25.
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“setpoint” is not just any value, but a value that—per the surrounding claim
language—equates to a measure of “torque.” See Phillips v. AWH Corp.,
415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he claims themselves
provide substantial guidance as to the meaning of particular claim terms . . .
[T]he context in which a term is used in the asserted claim can be highly
instructive”).
Paice, on the other hand, argues that “setpoint” is synonymous with a
“transition” point, not a torque value. PO Resp. 4–7. Citing the
specification, Paice urges that “setpoint” must be construed to indicate a
point “at which a transition between operating modes may occur.” Id. at 4,
7. Paice’s argument is misplaced. Although Paice is correct that sometimes
the specification describes the setpoint in terms of a “transition point” (see
id. at 5), the claim language itself makes clear that setpoint relates simply to
a torque value, without requiring that it be a transition point. Indeed, the
specification acknowledges that the mode of operation does not always
transition, or switch, at the setpoint, but instead depends on a number of
parameters. For instance,
the values of the sensed parameters in response to which the
operating mode is selected may vary . . . , so that the operating
mode is not repetitively switched simply because one of the
sensed parameters fluctuates around a defined setpoint.

Ex. 1101, 19:45–51 (emphasis added). That disclosure suggests that a
transition does not spring simply from the recitation of “setpoint.” Thus, we
will not import into the meaning of “setpoint” an extraneous limitation that
is supported by neither the claim language nor the specification. As such,
we reject Paice’s attempt to further limit the meaning of setpoint to a
transition between operating modes.
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We also regard as meaningful that nothing in the specification
precludes a setpoint from being reset, after it has been set. The specification
states that the value of a setpoint may be “reset . . . in response to a repetitive
driving pattern.” Ex. 1101, 39:60–63. But, just because a setpoint may be
reset under certain circumstances does not foreclose it from being “set,” or
“fixed,” at some point in time.8 A setpoint for however short a period of
time is still a setpoint. Thus, we construe “setpoint” as a “predetermined
torque value that may or may not be reset.”
Finally, Paice argues that any construction limiting the meaning of
setpoint to a “torque value” is inconsistent with the construction adopted by
two district courts in related litigation.9 PO Resp. 4. Although, generally,
we construe claim terms under a different standard than a district court, and
thus, are not bound by a district court’s prior construction, Paice’s emphasis
on the district court’s construction compels us to address it. See Power
Integrations, Inc. v. Lee, 797 F.3d 1318, 1327 (Fed. Cir. 2015) (“Given that
[patent owner’s] principal argument to the board . . . was expressly tied to
the district court’s claim construction, we think that the board had an
obligation, in these circumstances, to evaluate that construction”).
In that regard, the district court held:
there is nothing in the claims or specification that indicate a
given setpoint value is actually represented in terms of torque.

8 The definition of “set” is “determined . . . premeditated . . . fixed . . .
prescribed, specified . . . built-in . . . settled.” Merriam-Webster’s Collegiate
Dictionary (10th ed. 2000). Ex. 3001.
9 Paice LLC v. Toyota Motor Corp., No. 2:07-cv-00180, 2008 WL 6822398
(E.D. Tex. Dec. 5, 2008); Paice LLC v. Hyundai Motor Co., No. 1:12-cv-
00499, 2014 WL 3725652 (D. Md. July 24, 2014).

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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. 1120, 13 (discussing “setpoint” in the context of related U.S. Patent No.
7,104,347 B2). But, as discussed above, although claims are read in light of
the specification, it is the use of the term “setpoint” within the context of the
claims themselves that provides a firm basis for our construction. See
Phillips, supra. Here, the claims instruct us that “setpoint,” when read in the
context of the surrounding language, is limited to a torque value. Thus, we
construe “setpoint” as representing a torque-based value.
2. “Road load” or “RL”
The term “road load” or “RL” appears in independent claim 21, as
well as dependent claims 8, 18, and 26. Both Ford and Paice appear to agree
that “road load” means the instantaneous torque required to propel the
vehicle. Pet. 18–19; PO Resp. 22, 29–30. That proposed construction
comports with the specification, which defines “road load” as “the vehicle’s
instantaneous torque demands, i.e., that amount of torque required to propel
the vehicle at a desired speed.” Ex. 1101, 12:28–32.
In further defining “road load,” the specification notes that:
the operator’s depressing the accelerator pedal signifies an
increase in desired speed, i.e., an increase in road load, while
reducing the pressure on the accelerator or depressing the brake
pedal signifies a desired reduction in vehicle speed, indicating
that the torque being supplied is to be reduced or should be
negative.

Id. at 12:35–41 (emphases added). As such, the specification states that road
load “can be positive or negative.” Id. at 12:41–47. Thus, consistent with
the specification, we construe “road load” or “RL” as “the amount of
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instantaneous torque required to propel the vehicle, be it positive or
negative.”
3. “Rate of Change”
Finally, Ford asks that the term “rate of change,” found in claims 21
and 30, be construed to mean “rate of increase” because that construction is
consistent with an amendment that was requested during prosecution of the
’097 patent, but “mistakenly failed” to get entered, even though the
amendment was entered with respect to other occurrences of the “rate of
change” term found elsewhere in the claims. Pet. 13–14 (citing Ex. 1103,
234). Without that construction, Ford argues, the term “rate of change” in
claims 21 and 30 is left with “no antecedent basis.” Id. at 14. Paice does not
oppose Ford’s proposed construction, and we see merit in reconciling the
“rate of change” term with applicant’s clear intention that it be “rate of
increase,” as evidenced by the prosecution history. Ex. 1103, 234. Thus, we
conclude that the term “rate of change” is properly construed to mean “rate
of increase.”
B. Ground 1—Claims 1, 2, 5, 6, 8–12, 15, 16, 18–22, 25, 26, 28, and
29—Obviousness over Severinsky and Anderson

Ford relies on Severinsky and Anderson as together teaching the
limitations of independent claims 1, 11, and 21, and dependent claims 2, 5,
6, and 8–10, 12, 15, 16, 18–20, 22, 25, 26, 28, and 29. Pet. 20–44. Ford
also advances a reason why a skilled artisan would have combined their
teachings to arrive at the claimed invention. Id. at 44–45. Specifically, like
the claimed invention, 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 operation of the
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engine and motor.10 Compare Ex. 1104, Fig. 3 (Severinsky) with Ex. 1101,
Fig. 4 (the ’097 patent). Also, Severinsky teaches that “stoichiometric
combustion” is important “[t]o lower the toxic hydrocarbon and carbon
monoxide emissions” of the engine. Ex. 1104, 12:13–17.
Acknowledging that Severinsky does not disclose achieving
stoichiometric combustion by limiting the “rate of increase,” or “rate of
change,” of the engine’s output torque, as required by independent claims 1,
11, and 21, Ford relies on Anderson as teaching this limitation. Pet. 22–23
(citing Ex. 1105, 7). Notably, Anderson discloses a hybrid control strategy
that “maintains the stoichiometric air fuel ratio” of the engine by limiting
“engine starts and transients,” and more specifically, by performing “slow
transients” so the “speed of the transient” is not “too fast.”11 Ex. 1105, 7.
The benefit of this strategy, according to Anderson, is that “[hydrocarbon
and carbon monoxide] emissions are minimized.” Id. In combining
Severinsky and Anderson, Ford submits that supplementing Severinsky’s
engine control strategy with Anderson’s “slow transients” strategy would
have been obvious to a skilled artisan because both references correlate
“stoichiometric” combustion with minimizing carbon emissions. Pet. 44
(citing Ex. 1102 ¶¶ 546–550). We agree.

10 Ford’s declarant, Dr. Jeffrey L. Stein, whose testimony we credit,
confirms the teachings of Severinsky with respect to the basic elements and
functions recited by claims 1, 11, and 21, i.e., the engine, motor, battery, and
controller. Ex. 1102 ¶¶ 128–134, 266–272, 400–406.
11 The term “transients” is used to describe relatively short-term events
between steady-state conditions. The engine “transients” disclosed in
Anderson refer to the relatively rapid changes in the output torque of the
engine due to a change in the amount of torque requested. The speed of the
transient refers to its rate of increase over time. Ex. 1102 ¶¶ 81–83, 152.
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Paice, in turn, argues several points in response to Ford’s reliance on
the combination of Severinsky and Anderson: first, the references fail to
teach or suggest the claimed “controller” and its associated functional
limitations; and, second, the references cannot be combined because
Severinsky’s “parallel” hybrid control strategy “teaches away” from
Anderson’s “series” hybrid control strategy. PO Resp. 2, 12–32, 37–47. We
are not persuaded by Paice’s arguments.
1. The Claimed “Controller”
Paice starts out by arguing that Ford has failed to prove that the
combination of Severinsky and Anderson discloses or suggests a controller
“responsive to an operator command.” PO Resp. 15, 17, 18. This argument
fails for the simple reason that none of claims 1, 11, and 21 requires that the
controller be responsive to an operator command; instead, this limitation is
found in claim 30, which is part of a different ground.
In any event, Severinsky discloses a controller in much the same way
as the challenged claims, stating that “microprocessor 48 controls the flow
of torque between the motor 20, the engine 40, and the wheels 34 responsive
to the mode of operation of the vehicle.” Ex. 1104, 10:27–30. Likewise,
Severinsky discloses that “microprocessor 48 is provided with all
information relevant to the performance of the system, and appropriately
controls torque transfer unit 28, internal combustion engine 40, switching
unit 28, and electric motor 20 to ensure that appropriate torque is delivered
to the wheels 34 of the vehicle.” Id. at 12:64–13:2. And, although not
required by claims 1, 11, and 21, Severinsky further discloses that
“microprocessor 48 . . . responds to operator commands received over
control line 68.” Id. at 12:60–64; see also id., Fig. 3 (depicting input of
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“Operator Commands” to “µP Controller 48”). Based on these explicit
disclosures, we find that Severinsky teaches the “controller” limitation of the
challenged claims. See Ex. 1102 ¶¶ 138–148.
2. Operating the Electric Motor “To Provide Additional Torque”
When the Engine’s Torque is Inefficient or Insufficient

Paice next argues that the combination of Severinsky and Anderson
does not teach “a controller that supplements engine torque with motor
torque.” PO Resp. 15. According to Paice, “[t]here is no disclosure in
Severinsky that the electric motor is used to provide additional torque to
propel the vehicle when the rate of increase of engine output torque is
limited or when the engine is operating below its capabilities.” Id. at 17
(emphasis added). We disagree.
As required by claims 1, 11, and 21, the controller activates the
electric motor “to provide additional torque” when the torque required to
propel the vehicle exceeds the amount of torque provided by the engine. Put
simply, the electric motor helps the engine drive the vehicle when the engine
cannot do it alone. Severinsky teaches this limitation, expressly recognizing
that the “[m]icroprocessor 48 monitors the operator’s inputs and the
vehicle’s performance, and activates electric motor 20 when torque in
excess of the capabilities of engine 40 is required.” Ex. 1104, 14:15–18
(emphasis added). For example, “[t]he electric motor . . . is used to supply
additional power as needed for acceleration and hill climbing, and is used to
supply all power at low speeds, where the internal combustion engine is
particularly inefficient, e.g., in traffic.” Id. at 9:52–57 (emphasis added); see
also id. at 10:36–38 (“[i]f the vehicle then starts to climb a hill, the motor 20
is used to supplement the output torque of engine 40”). Likewise,
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Severinsky specifies “a highspeed acceleration and/or hill climbing mode,
wherein both internal combustion engine 40 and electric motor 20 provide
torque to road wheels 34.” Id. at 14:22–25 (emphasis added). Those
express disclosures by Severinsky are no different than what the claims
require—that the controller activate the motor “to provide additional torque”
when the torque provided by the engine is insufficient to drive the vehicle.
See Ex. 1102 ¶¶ 143–147, 424–430. We find that Severinsky’s teaching of
supplementing the torque of the engine with that of the motor meets squarely
the functional limitation of the electric motor recited by challenged claims 1,
11, and 21.
3. Limiting the “Rate of Increase” of the Engine’s Output Torque
To Achieve “Substantially Stoichiometric” Combustion

Ford relies on the combination of Severinsky and Anderson for
teaching that the controller limits the “rate of increase” of the engine’s
output torque so that fuel combustion “occurs at a substantially
stoichiometric ratio,” as required by claims 1, 11, and 21. Pet. 22–24; see
also Ex. 1102 ¶¶ 148–161. To begin, Severinsky teaches that the
“microprocessor controller 48 controls the rate of supply of fuel to engine
40.” Ex. 1104, 10:4–6. According to Ford’s declarant, Dr. Stein, that
teaching by Severinsky is “one way the microprocessor 48 limits the rate of
increase of output torque of the engine 40.” Ex. 1102 ¶¶ 149–150; Ex. 1129
¶¶ 41–42.
With that foundation in mind, Ford proffers Anderson as teaching an
additional hybrid control strategy—one that actively limits the rate of
increase of the engine’s output torque “by only allowing slow engine
transients,” with the objective of optimizing fuel economy and reducing
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harmful emissions. Pet. 23, 44–45 (emphasis added). Ford then surmises
that supplementing Severinsky’s microprocessor strategy, which already
limits the rate of increase of the engine’s output torque by controlling the
rate of fuel supply to the engine, with Anderson’s “slow transients” strategy,
would have been obvious to a skilled artisan because both references are
concerned with hybrid control strategies for improving fuel economy and
reducing harmful emissions. Id. at 44–45 (citing Ex. 1102 ¶¶ 541–550). We
find Ford’s argument persuasive.
Anderson is clearly focused on a hybrid control strategy that slows
engine transients in an effort to reduce the carbon emissions associated with
engine combustion. For instance, in describing an optimum hybrid control
strategy for the engine (or “APU”), Anderson explains that “slower
transients are desirable for reducing emissions” because:
[t]ransients present an emissions problem that is largely
related to the speed of the transient. . . . If the transient is too
fast, the engine may run rich, increasing CO and HC emissions,
or lean, increasing NOx emissions. Some of this effect can be
reduced using a hybrid strategy that only allows slow
transients, but this places greater strain on the LLD [battery].12

12 We do not find persuasive Paice’s argument that Anderson’s recognition
of certain tradeoffs (such as strain on the battery) would have discouraged a
skilled artisan from using her “slow transients” control strategy. See PO
Resp. 19. Recognizing that her “slow transients” strategy comes with
certain tradeoffs, Anderson emphasizes that “the design of an optimum
control strategy for that [hybrid] system should be concurrent to allow
tradeoffs to be made while the designs are still fluid. An efficient
optimization process must involve all aspects of the system . . . from the
beginning.” Ex. 1105, 3. And, she later recognizes that “[t]he APU control
strategy must be robust,” despite “[t]radeoffs . . . made between engine
complexity, cost, fuel efficiency, and battery lifetime.” Id. at 7. Thus, while
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Ex. 1105, 7 (emphasis added). That disclosure of slower engine transients
suggests limiting the rate of increase of the engine’s output torque. Ex. 1102
¶ 153. Importantly, Ford’s declarant, Dr. Stein, testifies that a skilled artisan
“would know that slowing engine transients means slowing the rate of
increase of engine output torque to something less than the [engine’s]
maximum rate of increase.” Ex. 1102 ¶ 666; see also id. ¶ 154. Thus, we
find that Anderson’s “slow transients” strategy would have suggested to a
skilled artisan a hybrid control strategy that limits the engine’s output torque
“to less than [its] inherent maximum rate of increase of output torque,” as
required by claims 1, 11, and 21. Ex. 1129 ¶¶ 32, 33, 43–45.
With respect to limiting the engine’s output torque to achieve
combustion at “a substantially stoichiometric ratio,” Anderson explains that
engine transients make it “difficult” to maintain a “stoichiometric air fuel
ratio”—the ratio at which complete combustion occurs. Ex. 1105, 7. On
that point, Anderson elaborates as follows:
Frequently, one of the principle aims of a hybrid vehicle is to
reduce vehicle emissions to ULEV (Ultra Low Emission
Vehicle) levels. Consequently, APU [engine] emissions are
very important for system success. In general, emissions are
minimized when a stoichiometric air to fuel ratio is maintained
by a closed loop feedback system (using an oxygen sensor for
feedback). In some operating regimes, such as engine starts
and transients, the stoichiometric ratio is very difficult to
maintain resulting in an increase in emissions.

Id. (emphases added).

Anderson recognizes certain tradeoffs in the design process, nowhere does
she discourage the use of “slow transients” in her hybrid control strategy.
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As a result, to resolve this difficulty, Anderson’s control strategy
“maintains the stoichiometric air fuel ratio” by purposefully slowing “the
speed of the transient” so it is not “too fast.” Id. Ford’s declarant, Dr. Stein,
confirms as much, testifying that Anderson’s disclosure of slower engine
transients (i.e., limiting a rate of increase of the engine’s output torque)
“helps the vehicle’s closed loop feedback system maintain operation near the
stoichiometric air/fuel ratio, thereby reducing emissions.” Ex. 1102 ¶ 161.
Dr. Stein further testifies that “the slower engine transients provide more
time for the closed loop feedback system to react to sensed oxygen levels
and adjust the fuel rate so that stoichiometric combustion can occur.” Id.
Paice responds that Anderson’s disclosure of “slow transients” is
linked to “engine speed, not engine torque.” Ex. 2102 ¶ 129. But Paice fails
to account for Anderson’s description of the engine’s “transient capabilities”
in terms of “power output” and “combinations of speed and torque” for
greater optimization of the hybrid control strategy. Ex. 1105, 7 (emphasis
added); see also Ex. 1129 ¶¶ 34–37. When viewed properly in the context
of the skilled artisan, Anderson teaches a hybrid strategy that limits the rate
of increase of the engine by controlling engine transients and their effect on
stoichiometric combustion. See Ex. 1129 ¶¶ 44–47, 50–53, 69–71. We are
not persuaded by Paice’s attempt to focus on isolated passages in Anderson,
to the exclusion of its import as a whole.
Based on the express disclosures of Severinsky and Anderson, as well
as the testimony of Ford’s declarant, Dr. Stein, we are persuaded that the
combined teachings of Severinsky and Anderson would have suggested to a
skilled artisan a hybrid control strategy in which “the rate of increase of
output torque of the engine is limited” so that fuel combustion occurs “at a
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substantially stoichiometric ratio,” as required by claims 1, 11, and 21. This
is nothing more than applying a known technique from the prior art (slowing
the rate of increase of the engine’s output torque) for the same purpose
(maintaining stoichiometric combustion) to achieve the same benefit
(improving fuel economy and reducing carbon emissions). See Ex. 1102
¶ 543; Ex. 1129 ¶¶ 46–53, 69–71.
4. The Claimed “Setpoint”
Also central to our analysis of claims 1, 11, and 21 are the limitations
directed to the “setpoint,” or “SP,” at which the controller operates the
engine to propel the vehicle. Specifically, claims 1 and 11 recite that the
controller operates the engine “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.” Ex. 1101, 57:1–7, 58:11–17. And, claim 21 adds that
“when RL is between SP and a maximum torque output (MTO) of the
engine, wherein the engine is operable to efficiently produce torque above
SP.” Id. at 59:7–12.
In determining whether to employ the engine or the motor or both,
Severinsky teaches that the microprocessor operates the engine only when it
is “efficient” to do so, and if not, the motor is used:
the internal combustion engine is operated only under the most
efficient conditions of output power[13] 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

13 Paice’s declarant, Mr. Hannemann, testified that a skilled artisan would
have understood that “power is a product of torque and speed.” Ex. 1132,
31:6–13 (emphasis added).
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vehicle forward and the internal combustion engine is used only
to charge the batteries as needed.

Ex. 1104, 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 point at which the
engine operates efficiently is based on a “torque” value, 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).
Paice does not dispute that Severinsky teaches operating the engine
when it is efficient to do so. Rather, emblematic of its response, Paice
argues that Severinsky fails to teach the claimed “setpoint” because
Severinsky purportedly turns the engine on “based on the vehicle speed, and
not the road load or any other torque demand or metric.” PO Resp. 25; see
also id. at 8, 21, 27–28, 58 (arguing same). In Paice’s view, “Severinsky
determines when to turn the engine on based on the speed of the vehicle in
contrast to the ’097 patent, which turns the engine on based on road load
(claim 21) or the torque necessary to operate the vehicle (claims 1 and 11).”
PO Resp. 25.
We are not persuaded by Paice’s isolated reading of Severinsky, while
downplaying its teaching as a whole. It is the totality of Severinsky that
must be assessed, not its individual parts. Paice argues that “speed” is the
sole factor used by Severinsky’s microprocessor in determining when to
employ the engine. That is 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”
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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. 1104, 17:11–15 (emphases added).
Although Severinsky does not use the term “road load” expressly,
neither do claims 1 or 11. Instead, both Severinsky and the claims describe
operation of the engine in terms similar to our construction of “road load.”
For example, just as claims 1 and 11 describe the controller as operating the
engine in response to “the torque required to operate the hybrid vehicle,” so
too does Severinsky describe its microprocessor as operating the engine in
response “to the load imposed by the vehicle’s propulsion requirements.”
Id. The similarity of those descriptions provides ample support for finding
that Severinsky teaches an engine control strategy that depends on the torque
required to propel the vehicle, as called for by claims 1 and 11.14
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

14 We also are not persuaded by the testimony of Paice’s declarant, Mr.
Hannemann, 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. 2102 ¶ 176. Plainly, this passage in Severinsky
relates to operation of the engine—for it states expressly 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. 1104, 17:7–15 (emphases added).
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efficient operational point, that is, such that it produces 60–90% of its
maximum torque whenever operated.” Id. at 20:63–67 (emphasis added).
Just as Severinsky’s “efficient operational point” is expressed as a
percentage of maximum torque, so too is the claimed “setpoint,” which is
described in the ’097 patent as being “equal to 30% of MTO.” Ex. 1101,
39:55; see also id. at 20:43–45 (“the engine is never run at less than 30% of
maximum torque output (‘MTO’)”). That Severinsky describes the engine’s
“efficient operational point” in terms similar to, if not the same as, the
“setpoint” in the ’097 patent, i.e., a percentage of maximum torque, runs
counter to Paice’s argument that Severinsky employs the engine based on
speed alone.
Paice cites a number of passages in Severinsky that purportedly
evince a control strategy that is based on speed, as opposed to torque. PO
Resp. 22, 25, 28. We do not find the cited passages supportive of Paice’s
argument. For example, Paice accuses Ford of ignoring Severinsky’s
disclosure that the engine is turned off during “low speed” or “traffic”
situations, and turned on during “moderate speed” or “highway cruising”
situations. Id. at 25, 28. Those disclosures, however, do not foreclose
Severinsky from teaching that the engine’s torque requirements are a
determinative factor of when to employ the engine. In other words, torque
and speed are not mutually exclusive concepts.15 Indeed, the ’097 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.

15 See supra n.13.
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1101, 17:24–25, 19:23–24, respectively (emphasis added). Thus, just as
“speed” plays a role in the control strategy of the ’097 patent, so too does it
in Severinsky.
Paice also points to Severinsky’s disclosure of “speed-responsive
hysteresis” as purported evidence of a control strategy based on “a speed
threshold and not based on a torque demand.” PO Resp. 28. According to
Paice, “[i]t simply makes no sense for Severinsky to use ‘speed responsive-
hysteresis’ if Severinsky uses road load to control engine starts and stops.”
Id. But Severinsky only discusses the hysteresis feature as “speed-
responsive” because it is used to avoid cycling the engine on and off in
“low-speed” situations where engine speed may dip temporarily to “20-25
mph” while in a highway mode. Ex. 1104, 18:23–42. That discussion of
low-speed hysteresis is essentially the same as the description of hysteresis
in the ’097 patent, which discloses that “excessive mode switching otherwise
likely to be encountered in suburban traffic can be largely avoided [by]
implementing this ‘low-speed hysteresis’.” Ex. 1101, 42:65–44:1.
In any event, that Severinsky may teach an additional hysteresis
feature as a way of controlling unintended engine starts during temporary
dips in speed does not preclude Severinsky from also teaching the use of a
torque value, or road load, as a way to determine when to employ the engine
in the first instance. We find persuasive the testimony of Ford’s other
declarant, Dr. Gregory Davis, who confirms that even if Severinsky is
disclosing the use of speed in the context of hysteresis in mode switching, a
skilled artisan would not “read the actual words in divorce from the rest of
the [Severinsky] patent,” which, in his opinion, discloses “in other areas that
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they’re looking clearly at the torque” in determining when to switch between
modes. Ex. 2108, 167:16–170:20.
Generally speaking, Paice is attempting to hold Severinsky to a
different standard than it holds the claimed invention. That Severinsky may
discuss “speed” as one of the parameters used by the microprocessor does
not negate its overall, and express, teaching of employing the engine
“responsive to the load imposed by the vehicle’s propulsion requirements,”
or road load, “so that the engine [] can be operated in its most fuel efficient
operating range.” Ex. 1104, 17:11–15. We reject Paice’s arguments that
criticize Severinsky’s references to “speed,” when the ’097 patent itself
recognizes that “speed” plays a role in a road load-responsive hybrid control
strategy.
Paice also faults Severinsky for disclosing that “the microprocessor
receives inputs from the driver.” PO Resp. 29. But, once again, Paice fails
to recognize that, first, the ’097 patent says the same thing, and second, the
claims do not preclude the controller from receiving inputs from the driver
as part of the engine control strategy. Specifically, the ’097 patent describes
the controller as receiving operator input commands, stating 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 17:40–44. The ’097 patent further
explains that the “operator input commands” monitored by the
microprocessor include the position of the accelerator and brake pedals. Id.
at 27:26–38. Given that the ’097 patent itself calls for the microprocessor to
be responsive not only to the vehicle’s torque demands but also to the
operator’s input commands (such as pedal position), we are not persuaded
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by Paice’s attack on Severinsky for teaching a microprocessor control
strategy that relies on these same factors.
As another purported difference, Paice argues that Severinsky’s
disclosure of “potential output torques of the engine” is “unrelated to the
input torque demand control strategy taught by the ’097 patent, for example,
using the instantaneous torque required to propel the vehicle (i.e., road
load).” PO Resp. 22. In other words, Paice takes issue with Severinsky’s
expression of road load in terms of a torque output. This argument fails for
the simple reason that, like Severinsky, the ’097 patent itself expresses “road
load” as a torque output, not an input. Notably, according to the ’097 patent,
“[t]he road load is expressed as a function of the engine’s maximum torque
output.” Ex. 1101, 37:57–58 (emphasis added); see also id. at 36:25–27
(“[t]he road load is shown . . . as varying from 0 at the origin to 200% of the
engine’s maximum torque output”). Thus, we disagree with Paice’s attempt
to characterize the claimed “road load” as a torque “input” when the ’097
patent itself expressly states otherwise.
In the end, we are not persuaded by Paice’s argument that Severinsky
does not teach the “setpoint” required by the claims. See PO Resp. 21–27,
37–38. Rather, we credit the testimony of Ford’s declarant, Dr. Stein, that a
skilled artisan would have understood the lower limit of Severinsky’s
range—60% of MTO—to be a predetermined setpoint that is based on
torque. See Ex. 1102 ¶¶ 167–172, 177–184, 187–189; see also Pet. 24–25,
35–36. Indeed, Paice admits that Severinsky’s “60% of MTO is a torque
value,” but argues it is not a setpoint because there is no evidence “that a
‘transition between operating modes may occur’ at this [torque] value.” PO
Resp. 38. That argument, however, is premised on an improper construction
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of setpoint, a construction that we hold does not require a transition between
operating modes. See Section III.A.1 above. Thus, we find that Severinsky
fulfills the claim requirement of operating the engine when the torque
required to propel the vehicle is equal to a setpoint (SP) that is substantially
lower than the engine’s maximum torque output (MTO).
5. The Reason to Combine
As discussed above, we are persuaded that a skilled artisan would
have been led to combine the basic hybrid control strategy of Severinsky
with the known technique of slowing the engine transient, as taught by
Anderson, because both references share the same fundamental goals of
reducing carbon emissions by maintaining a stoichiometric air-to-fuel ratio.
See Ex. 1102 ¶¶ 541–550; Ex. 1129 ¶¶ 38–49. Paice argues, however, that
Severinsky and Anderson cannot be combined because they “are directed to
very different hybrid architectures and control strategies.” PO Resp. 38–39.
At the heart of Paice’s argument is that “the series hybrid engine control
strategies of Anderson would not work with the parallel hybrid architecture
and control strategies of Severinsky.” Id. at 39 (emphases added); see also
id. at 35, 42 (same).
In making this distinction, Paice contends that Anderson’s control
strategy of using “slow transients” is limited to a series hybrid system,
whereas Severinsky’s control strategy requires “fast transients” because it is
a parallel system. PO Resp. 39–42. As support, Paice points to a single
reference in Anderson to “fast transients,” and argues that Anderson itself
proves that “the engine in a parallel hybrid system must perform fast
transients.” Id. at 39 (citing Ex. 1105, 5); see also id. at 42 (same). And,
according to Paice, “[n]owhere does Anderson suggest that the [slow
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transients] hybrid control strategies articulated for a series hybrid can be
applied to a parallel hybrid.” Id. at 9.
A close review of Anderson, however, does not support Paice’s
position. Specifically, Anderson speaks of “fast power transients” only
when discussing “two distinct extremes,” not the optimum strategy for a
hybrid vehicle. Ex. 1105, 5. Indeed, later in the same passage, Anderson
points out that “neither of these [extreme] strategies would be the optimum
strategy” for the hybrid vehicles “under consideration.” Id. And, when
speaking of the “optimum” strategy being considered (later described to be
“slow transients”), Anderson makes clear that it applies equally to both
series-type and parallel-type hybrid vehicles.
More specifically, in beginning her discussion of “the design of an
optimum control strategy,” Anderson describes both types of hybrid
vehicles—“Series System” and “Parallel System.” Ex. 1105, 3–5.
Immediately following that description of series-type and parallel-type
vehicles, Anderson makes the following important observation: “[t]he
thought processes presented in this paper are sufficiently general that they
can be applied to any type of vehicle.” Id. at 4. Paice’s argument to the
contrary would require us to ignore Anderson’s clear indication to the reader
that her ensuing discussion of the optimum control strategy applies equally
to both parallel and series-type vehicles.
Although Anderson describes her strategy of “slow transients” in
terms of a series-type vehicle, she does so because it permits versatility in
the design process, explaining that: “[t]o fully explore the flexibility
allowed by the hybrid system, we focus on the design of a strategy for the
most versatile layout: the power assist [series-type] hybrid.” Id. at 4–5. As
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for what a skilled artisan would understand from Anderson’s utilization of a
series-type vehicle over a parallel-type vehicle in describing her control
strategy, Ford’s declarant, Dr. Stein, testifies:
[In] thinking about optimizing the design of the vehicle, hybrid
electric vehicle, it’s important to understand the tradeoffs
between the different components. And she [Anderson] feels
that she can illustrate this trade-off by—perhaps more
dramatically, in the short amount of space she has here—by
focusing on the series system. But she makes it clear that
looking at these trade-offs are the same things you do in both
the series and parallel configurations.

* * *
[B]y virtue of what the statement says and my own technical
expertise that she’s providing a design methodology that she
[Anderson] primarily illustrates on a series system, but is quite
clear in showing that it is applicable to a parallel system, as
well.

Ex. 2106, 180:13–182:2.
Based on Dr. Stein’s testimony of how a skilled artisan would have
understood Anderson’s disclosure as a whole, including Anderson’s
recognition of applying her control strategy equally to series-type and
parallel-type hybrid vehicles, we are persuaded a skilled artisan would have
understood Anderson as teaching that “slow engine transients” are the
optimum strategy for both series-type and parallel-type hybrid vehicles. See
Ex. 1129 ¶¶ 38–53, 69–71. As such, we conclude that a skilled artisan
would have been led to combine Anderson’s known strategy of slowing
engine transients with Severinsky’s base, parallel-type control system in
order to better maintain stoichiometric combustion and, thereby, reduce
carbon emissions. See Ex. 1102 ¶¶ 541–550; Ex. 1129 ¶¶ 38–49. We have
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considered Paice’s evidence and arguments to the contrary, but we find more
persuasive Ford’s rationale for combining Severinsky and Anderson.
6. Conclusion
We conclude that Ford has demonstrated, by a preponderance of the
evidence, that independent claims 1, 11, and 21 would have been obvious
over the combined teachings of Severinsky and Anderson.
Paice does not argue dependent claims 2, 5, 6, and 8–10, 12, 15, 16,
18–20, 22, 25, 26, 28, and 29 separately, but instead relies on the same
arguments it made for claims 1, 11, and 21. Nonetheless, we are persuaded
by Ford’s evidence and analysis with respect to these dependent claims, and,
accordingly adopt Ford’s analysis as our own. 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, and 26, 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, 10, 19, 20, 28, and 29, Severinsky
discloses that the battery supplies energy to the motor at voltages “between
500 and 1500 volts” and “less than 75 amperes.” Id. at 19:39–49. Thus,
based on our review of the arguments and evidence presented, we determine
that Ford also has demonstrated, by a preponderance of the evidence, that
dependent claims 2, 5, 6, and 8–10, 12, 15, 16, 18–20, 22, 25, 26, 28, and
29 would have been obvious over Severinsky and Anderson.
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C. Ground 2—Claims 3, 13, and 23—Obviousness over Severinsky,
Anderson, and Yamaguchi

Dependent claims 3, 13, and 23 recite that the “engine is rotated at at
least 300 rpm” so that “the engine is heated, prior to supply of fuel for
starting the engine.” Ford relies on Yamaguchi, in combination with
Severinsky and Anderson, as teaching this limitation. Pet. 45–48 (citing Ex.
1102 ¶¶ 551–560). Yamaguchi discloses rotating an engine to 600 rpm
before starting it, and then starting the engine once it reaches a
predetermined temperature. Ex. 1106, 8:62–9:5, 11:27–33, Figs. 3, 8, 11.
Ford’s declarant, Dr. Stein, testifies that this process amounts to heating the
engine before igniting it. Ex. 1102 ¶¶ 553–558.
Paice responds that, because Severinsky teaches “operating the engine
at a lower temperature,” it “teaches away from heating the engine,” as taught
by Yamaguchi. PO Resp. 50–51. We are not persuaded for two reasons.
First, Severinsky refers to a “lower temperature” in terms of operating the
engine, not “starting the engine,” as claims 3, 13, and 23 require. Ex. 1104,
12:13–21 (“the engine 40 will be operated in lean burn mode . . . at a lower
temperature . . . than is a conventional engine”). Ford’s declarant, Dr. Stein,
confirms as much, explaining that Severinsky’s “lower temperature” relates
to “engine coolant temperature is typically around 200 degrees F during
steady operating conditions,” and not “the temperature of a cold engine” in
need of heating. Ex. 1129 ¶ 82 (emphasis added).
Second, Ford’s challenge of claims 3, 13, and 23 is predicated on
Severinsky, as modified by Anderson’s stoichiometric control strategy. As
Paice’s declarant, Mr. Hannemann, confirms, “if you employ a
stoichiometric strategy, then you don’t really need to worry about a lower
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temperature.” Ex. 1131, 68:8–23. Because the combination of Severinsky
and Anderson incorporates Anderson’s control strategy (of operating the
engine at a stoichiometric air-fuel ratio) into Severinsky’s control strategy,
Ford’s declarant, Dr. Stein, testifies that a skilled artisan would have
understood Severinsky’s modified control strategy does not apply to low
temperature engine starts, and thus, would not teach away from claims 3, 13,
and 23. Ex. 1129 ¶ 81.
Based on the testimony of both parties’ declarants, we are persuaded
that Severinsky’s modified control strategy would not have been viewed by
a skilled artisan as “teaching away” from being combined with Yamaguchi’s
teaching of heating the engine prior to starting it. Rather, we find Ford’s
evidence and arguments of a rationale to combine the teachings of
Yamaguchi with Severinsky and Anderson to be more persuasive than
Paice’s evidence and arguments to the contrary. See Ex. 1102 ¶¶ 587–595.
Accordingly, we adopt Ford’s analysis as our own. Thus, we conclude that
Ford has demonstrated, by a preponderance of the evidence, that dependent
claims 3, 13, and 23 are unpatentable as obvious over the combined
teachings of Severinsky, Anderson, and Yamaguchi.
D. Ground 3—Claims 4, 14, and 24—Obviousness over Severinsky,
Anderson, Yamaguchi, and Takaoka

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 fuel:air ratio of
no more than 1.2 of the stoichiometric ratio for starting the engine.” Ford
relies primarily on Takaoka16 for teaching this limitation, in combination

16 Ford establishes, and Paice does not dispute, that Takaoka is a printed
publication disseminated before September 1998. Ex. 1127.
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with Severinsky, Anderson, and Yamaguchi. Pet. 48–50; see also Ex. 1102
¶¶ 596–606.
Takaoka teaches that, in order for a hybrid system to lower emission
levels and optimize fuel consumption, the engine should “operate with λ = 1
over its entire range.” Ex. 1107, 2. Ford’s declarant, Dr. Stein, testifies a
skilled artisan would have understood that “a λ value of 1 (λ = 1)
corresponds [to] a air-fuel ratio of 1.0 of the stoichiometric ratio” and that
operating the engine at this ratio “over its entire range” necessarily includes
engine starts. Ex. 1102 ¶¶ 601–606. We credit Dr. Stein’s testimony, which
is corroborated by the ’097 patent’s disclosure of “lambda” as indicative of
stoichiometric ratio. See Ex. 1101, 39:10–12. Thus, we find that Takaoka’s
disclosure of achieving an air-fuel ratio of 1.0 of the stoichiometric ratio
over its entire range falls within the claimed range of “no more than 1.2 of
the stoichiometric ratio for starting the engine.”
Paice disputes Ford’s application of Takaoka. The sum of Paice’s
argument is that Dr. Stein’s analysis is conclusory because he purportedly
admitted that he did not know if it was possible for Takaoka to achieve a
stoichiometric air-fuel ratio “during cold starts.” PO Resp. 51–52 (citing Ex.
2103, 92:4–25). But claims 4, 14, and 24 do not speak of “cold starts.”
Rather, by way of intervening claims 3, 13, and 23, claims 4, 14, and 24
require that “the engine is heated prior to supply of fuel for starting the
engine.” Ex. 1101 57:19–26 (emphasis added). Thus, claims 4, 14, and 24
are directed to starting an engine after it has been heated, i.e., a hot start. See
Ex. 1129 ¶¶ 92–95. Thus, we find inapposite Paice’s elicitation from Dr.
Stein on a point that is irrelevant to what the claims actually recite.
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Also, we have considered but are not persuaded by Paice’s argument
that Takaoka cannot be combined with the hybrid systems of Severinsky,
Anderson, and Yamaguchi. See PO Resp. 52. Instead, we find persuasive
the rationale for the combination as explained by Ford’s declarant, Dr. Stein.
See Ex. 1102 ¶¶ 630–633. 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. See id.
Accordingly, we adopt Ford’s analysis as our own. Thus, after considering
the evidence and arguments, we conclude that Ford has demonstrated, by a
preponderance of the evidence, that dependent claims 4, 14, and 24 are
unpatentable as obvious over the teachings of Severinsky, Anderson, and
Yamaguchi when combined with Takaoka.
E. Ground 4—Claims 30 and 34—Obviousness Over Severinsky and
Takaoka

Ford challenges independent claim 30 and dependent claim 34 on the
ground that they would have been unpatentable as obvious over Severinsky
and Takaoka.17 Pet. 50–59; Ex. 1102 ¶¶ 634–695. Acknowledging that
Severinsky may not disclose “limit[ing] the rate of change of torque

17 As discussed in Section II.A. above, claim 30 was the subject of the -570
proceeding that resulted in a final written decision of unpatentability for
claim 30. Ground 4, however, is the first instance in which Ford challenges
dependent claim 34. And, although claim 30 has been determined to be
unpatentable, we exercise our discretion to maintain the instant proceeding
against claim 30 because it is incorporated within the body of claim 34 as a
matter of dependency. See 35 U.S.C. § 315(e)(1) (neither the plain terms of
this provision, nor chapter 31 more generally, prohibits the Board from
entering final decisions where it sees fit); see also 35 U.S.C. § 325(d)
(conferring authority on the Board to decide how to deal with multiple
proceedings). In any event, whatever renders obvious a dependent claim
necessarily renders obvious the claim from which it depends.
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produced by the engine” so that fuel combustion “occurs at a substantially
stoichiometric ratio,” as required by claim 30, Ford points to Takaoka’s
teaching of a hybrid control strategy that “reduce[s] quick transients in
engine load so that the air-fuel ratio can be stabilized easily.” Pet. 53 (citing
Ex. 1107, 5–6). And, as Ford’s declarant, Dr. Stein, 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, 669–674.
Paice, in turn, argues that Takaoka is directed to “an underpowered
engine to limit engine output, not a control strategy.” PO Resp. 53
(emphasis added). According to Paice, Takaoka “tells a POSITA nothing
about a control system for the [hybrid] vehicle.” Id. at 54. We disagree.
Takaoka discloses expressly a control scheme for lowering the emission
levels of the engine: “Emissions levels much lower than the current
standard values were attained by optimum control of the motor and engine.”
Ex. 1107, 8 (emphasis added). Takaoka further explains that “[b]y
allocating a portion of the load to the electric motor, the system is able to
reduce engine load fluctuation under conditions such as rapid acceleration”
and “[t]his makes it possible to reduce quick transients in engine load so that
the air-fuel ratio can be stabilized easily.” Id. at 6. We credit the testimony
of Ford’s declarant, Dr. Stein, that a skilled artisan would have understood
Takaoka’s disclosure of an “optimal control” to “reduce engine load
fluctuation” and “allocate a portion of the load to the electric motor” as
referring to a control strategy for limiting engine torque, not as directed to
the mechanical design of the engine. Ex. 1129 ¶¶ 98, 99. As Dr. Stein
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35
observed, “a mechanical component alone (e.g., an engine) is not capable of
such control.” Id. ¶ 101.
Paice also argues that “to [the] extent Takaoka discloses limiting any
characteristic of the engine, it’s the engine’s power, not torque.” PO Resp.
56. But Takaoka discloses expressly “reduc[ing] quick transients in engine
load.” Ex. 1107, 6. We find persuasive the testimony of Ford’s declarant,
Dr. Stein, that the terms “transients” and “engine load” in this context mean
“torque.” Ex. 1102 ¶¶ 658–661. As such, we find that the combination of
Severinsky and Takaoka teaches “limit[ing] the rate of change of torque
produced by the engine” so that fuel combustion “occurs at a substantially
stoichiometric ratio,” as required by claim 30,
After considering the evidence and arguments of both parties, we
conclude 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 fuel
economy and reducing emissions in hybrid vehicles, as argued by Ford. See
Pet. 57–59 (citing Ex. 1102 ¶¶ 699–706). Accordingly, we adopt Ford’s
analysis as our own, and determine that Ford has demonstrated by
preponderant evidence that claim 30 would have been unpatentable as
obvious over Severinsky and Takaoka.
We are also persuaded by Ford’s evidence and analysis with respect to
claim 34, which depends from claim 30. See Pet. 56–59; Ex. 1102 ¶¶ 679–
694. Here, Paice resurrects the same argument with respect to Severinsky as
it made for claims 1, 11, and 21, i.e., that Severinsky determines when to
switches modes “based on vehicle speed, not torque.” PO Resp. 58. We
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Patent 8,214,097 B2

36
reject Paice’s argument for the same reasons as discussed above. See
Section III.B.4. Thus, we conclude that Ford has demonstrated by
preponderant evidence that claim 34 would have been unpatentable as
obvious over Severinsky and Takaoka.
IV. CONCLUSION
Ford has demonstrated, by a preponderance of the evidence, that
claims 1–6, 8–16, 18–26, 28–30, and 34 of the ’097 patent are unpatentable
for obviousness under 35 U.S.C. § 103.
V. ORDER
Accordingly, it is hereby:
ORDERED that claims 1–6, 8–16, 18–26, 28–30, and 34 of the ’097
patent are held unpatentable; and
FURTHER ORDERED that any party seeking judicial review of this
Final Written Decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.
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Patent 8,214,097 B2

37

FOR PETITIONER:

Sangeeta G. Shah
Frank A. Angileri
Michael D. Cushion
Andrew B. Turner
BROOKS KUSHMAN P.C.
FPGP0110IPR2@brookskushman.com

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

FOR PATENT OWNER:

Timothy W. Riffe
Kevin E. Greene
Ruffin B. Cordell
Linda L. Kordziel
Brian J. Livedalen
Daniel A. Tishman
FISH & RICHARDSON P.C.
riffe@fr.com
greene@fr.com
IPR36351-0013IP2@fr.com