UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. FORD MOTOR COMPANY Petitioner,

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1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD FORD MOTOR COMPANY Petitioner, v. PAICE LLC & ABELL FOUNDATION, INC. Patent Owners. U.S. Patent No. 7,237,634 to Severinsky et al. IPR Case No. IPR PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. 311 ET SEQ. AND 37 C.F.R ET SEQ. OF CLAIMS 56-65, 68-77, , , 292, 293 AND 298 OF U.S. PATENT NO. 7,237,634 1

2 TABLE OF CONTENTS EXHIBIT LIST... iii I. INTRODUCTION... 1 II. MANDATORY NOTICES UNDER 37 C.F.R A. B. C. D. Real Party-In-Interest - 37 C.F.R. 42.8(b)(1)... 2 Related Matters - 37 C.F.R. 42.8(b)(2)... 3 Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3)... 3 Service Information Under 37 C.F.R. 42.8(b)(4)... 4 III. GROUNDS FOR STANDING 37 C.F.R (a)... 4 IV. OVERVIEW OF CHALLENGE - 37 C.F.R (b)... 4 V. CLAIM CONSTRUCTION 37 C.F.R (b)(3)... 5 VI. PRIORITY DATE OF THE CHALLENGED CLAIMS... 7 VII. A. B. C. The 634 Patent Family... 7 The Electrical Limitations in the Challenged Claims Are Unsupported Before April 2, The At Least 2.5 Ratio Is Unsupported Before April 2, The Maximum Voltage Limitation Is Unsupported Before April 2, The Maximum Current Limitation Is Unsupported Before April 2, An Insolubly Vague Incorporation by Reference Has No Impact THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD AND THE RELEVANT TIMEFRAME VIII. STATE OF THE ART IX. OVERVIEW OF THE 634 PATENT A. B. Background Purported Invention The Claimed Control Methodology, HEV Architecture and General Electrical Characteristics are Old The Claimed Voltage to Current Ratio of At Least 2.5 Is Arbitrary and Old i

3 3. The Maximum DC Voltage and Maximum Current Limitations Are Old X. GROUND OF UNPATENTABILITY A. B. Claims 56-65, 68-77, , 292, 293, 303 and 305 Are Obvious Over the 455 PCT Publication In View of Severinsky Non-Challenged Independent Base Claims a. Independent Claim b. Independent Claim c. Independent Claim d. Independent Claim Challenged Dependent Claims a. Dependent Claims 68, 242 and b. Dependent Claims 69, 243 and c. Dependent Claims 70, 244 and d. Dependent Claims 71, 245 and e. Dependent Claims 72, 246 and f. Dependent Claims 73, 247 and g. Dependent Claims 74, 248 and h. Dependent Claims 75, 249 and i. Dependent Claims 76, 250 and j. Dependent Claims 77, 251 and k. Dependent Claims Challenged Independent Claims 292 and 298 (and Dependent Claim 293) a. Independent Claim b. Dependent Claim c. Independent Claim Rationale to Combine XI. OBJECTIVE INDICIA OF NONOBVIOUSNESS XII. CONCLUSION ii

4 EXHIBIT LIST Exhibit No. Description Identifier 1151 U.S. Patent No. 7,237, Patent 1152 Declaration of Dr. Jeffrey L. Stein Stein Decl PCT Publication No. WO00/ PCT Publication 1154 U.S. Patent No. 5,343,970 Severinsky Ford s letter to Paice dated September 22, 2014 Ford Letter 1156 Paice, LLC et al. v. Ford Motor Co. 1:14-cv MD Ct. Decision 1157 Ford Motor Co v. Paice LLC, Case IPR , Paper 12 (P.T.A.B. Sept. 8, 2014) (Decision Denying Institution of Inter Partes Review) IPR Decision 1158 U.S. Provisional Application No. 60/100, Provisional Application 1159 U.S. Provisional Application No. 60/122, Provisional Application 1160 U.S. Patent No. 6,554, CIP Patent 1161 U.S. Application No. 09/822, CIP Application 1162 U.S. Application No. 09/264, Application 1163 U.S. Application No. 09/392, Application 1164 File History for U.S. Patent No. 7,237, File History 1165 U.S. Application No. 11/229, Application 1166 Ford Motor Co v. Paice LLC, Case IPR , Paper 10 (P.T.A.B. Sept. 30, 2014) (Decision Denying Institution of Inter Partes Review) 1167 Kozo Yamaguchi et al., Development of a New Hybrid System Dual System, SAE Technical Paper (February 1996) General Electric Company, Corp. Research & Dev., Near-Term Hybrid Vehicle Program, Final Report - IPR Decision Yamaguchi Paper GE Final Report iii

5 Exhibit No. Description Identifier Phase 1 (October 1979) U.S. Patent No. 3,888,325 Reinbeck 1170 U.S. Patent No. 4,335,429 Kawakatsu 1171 Cimline, Inc. v. Crafco. Inc., No (Fed. Cimline Cir. Opinion March 2, 2011) 1172 Curriculum Vitae of Dr. Jeffrey L. Stein Dr. Stein CV 1173 U.S. Patent No. 913,846 Pieper 1174 Michael Duoba, Ctr. for Transp. Research, Argonne Duoba Nat l Lab., Challenges for the Vehicle Tester in Characterizing Hybrid Electric Vehicles, 7th CRC on Road Vehicle Emissions Workshop (April 1997) Society of Automotive Engineers Special Publication, SAE SP-1331 Technology for Electric and Hybrid Vehicles, SAE SP-1331 (February 1998) 1176 Catherine Anderson & Erin Pettit, The Effects of APU Anderson Characteristics on the Design of Hybrid Control Strategies for Hybrid Electric Vehicles, SAE Technical Paper (1995) L. E. Unnewehr et al., Hybrid Vehicle for Fuel Economy, SAE Technical Paper (1976). Unnewehr Case No. IPR , Paper 8, Patent Owner s [Redacted] Preliminary Response to Petition for Inter Partes Review of U.S. Patent No. 7,455,134 (July 11, 2014) 1179 Performance Characterization Chevrolet S-10 Electric, Panasonic Lead-Acid Battery, Southern California Edison Electrical Transportation Division (December 1999). df 1180 Tesla Motors Website, retrieved October 31, IPR Redacted PO Prelim. Response S10 Performance Report Tesla Roadster Performance Specs iv

6 Exhibit No. Description Identifier 1181 GM Press Release, Corvette Stingray: 3.8 seconds from 0 to 60 mph, GM News Website, html/content/pages/news/us/en/2013/jun/0620- corvette-performance.html (June 20, 2013), retrieved November 1, GM Press Release 1182 Gene Berdichevsky et al., The Tesla Roadster Battery System, Tesla Motors, Inc. (August 16, 2006). es/docs/tesla.pdf 1183 Will Dron, Roadster 2.5 Sport Road Test, The Charging Point Website, sla/roadster-2.5-sport-roadtest.html#roadtest (July 18, 2011), retrieved November 1, Tesla Roadster Battery Tesla Roadster Road Test 1184 U.S. Patent Application No. 10/382, Application 1185 U.S. Patent No. 6,209, Patent 1186 U.S. Patent No. 6,338, Patent 1187 Comparison of 455 PCT Publication and 634 Patent Descriptions 455/ 634 Description Comparison v

7 I. INTRODUCTION Petitioner FORD MOTOR COMPANY ( Ford ) requests inter partes review of claims 56-65, 68-77, , , 292, 293 and 298 (collectively the Challenged Claims ) of U.S. Patent No. 7,237,634 to Severinsky et al. ( the 634 Patent, Ex. 1151), which is owned by PAICE, LLC et al. ( Paice ). The 634 Patent has 306 claims and is one of five patents Paice has asserted against Ford in litigation. Ford has asked Paice several times to limit the asserted claims to a reasonable number. (Ford Letter, Ex ) Paice has refused. Due to Ford s one-year statutory limit and page constraints on IPR petitions, Ford is filing several IPRs to address the 634 Patent claims and is trying to group the claims in a logical fashion. This IPR focuses on claims reciting at least one of the following limitations: (1) a ratio of maximum DC voltage... to [maximum] current supplied... is at least 2.5 ; (2) a maximum DC voltage supplied from said battery is at least approximately 500 volts or energy originating at the battery is supplied to the solid state inverter at a DC voltage having a peak of at least 500 volts ; and (3) a maximum current supplied from said battery is less than approximately 150 amperes or energy originating at the battery is supplied to the solid state inverter at a maximum current of no more than 150 amperes (collectively, the electrical limitations ). 1

8 As explained below, and in the Declaration of Dr. Jeffrey L. Stein ( Stein Decl., Ex. 1152), the Challenged Claims of the 634 Patent are unpatentable over two prior art references having the same inventor as the 634 Patent. Because there is no disclosure of the claimed electrical limitations in the ancestors of the 634 Patent prior to April 2, 2001, the effective filing date of the Challenged Claims is April 2, 2001 and does not extend back to the earliest claimed priority date of September 14, As such, a PCT application, which published in March 2000 as WO00/15455 ( the 455 PCT Publication, Ex. 1153) is intervening art under 35 U.S.C. 102(b). As described below, the 455 PCT Publication discloses all of the limitations of the Challenged Claims, except the electrical limitations quoted above, and those limitations are described in U.S. Patent No. 5,343,970 issued to Severinsky ( Severinsky 970, Ex. 1154). The 455 PCT Publication expressly references Severinsky 970, which provides one of multiple reasons to combine the references, rendering the Challenged Claims obvious. Petitioner is reasonably likely to prevail in showing that at least one of the Challenged Claims is not patentable. Inter partes review of the 634 Patent should be instituted. II. MANDATORY NOTICES UNDER 37 C.F.R A. Real Party-In-Interest - 37 C.F.R. 42.8(b)(1) Petitioner certifies that Ford Motor Company is the real party-in-interest. 2

9 B. Related Matters - 37 C.F.R. 42.8(b)(2) Petitioner identifies the following related judicial matters: 1) Paice, LLC and The Abell Foundation, Inc. v. Ford Motor Company, Case Number 1-14-cv-00492, filed February 19, 2014 in the District of Maryland, Baltimore Division. The 634 Patent and four other patents are asserted in this proceeding. The Maryland District Court issued an order 1) denying the Patent Owner s motion for a preliminary injunction to enjoin Ford from filing Petitions concerning the patents-insuit, and 2) staying the litigation pending IPRs of those patents. (MD Ct. Decision, Ex at 1, 10-17, 30.) 2) Paice LLC and The Abell Foundation, Inc. v. Hyundai Motor America, et al., Case Number 1:2012cv00499, filed on February 16, 2012 in the District of Maryland, Baltimore Division. The 634 Patent is being asserted in this proceeding. Petitioner has filed the following IPR petitions on the 634 Patent: IPR and IPR Petitioner has also filed IPRs directed to the related patents included in the above litigation proceedings specifically, IPR , IPR , IPR , IPR , IPR , IPR , IPR , and IPR C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3) Ford appoints Frank A. Angileri (Reg. No. 36,733) of Brooks Kushman P.C. as lead counsel, and Sangeeta G. Shah (Reg. No. 38,614), Michael D. Cushion (Reg. No. 3

10 55,094), and Michael N. MacCallum (Reg. No. 63,018) of Brooks Kushman P.C., as well as Lissi Mojica (Reg. No. 63,421) and Kevin Greenleaf (Reg. No. 64,062) of Dentons US LLP, as back-up counsel. A Power of Attorney is filed concurrently herewith. D. Service Information Under 37 C.F.R. 42.8(b)(4) Service of any documents to lead and back-up counsel can be made via handdelivery to Brooks Kushman P.C., 1000 Town Center, Twenty-Second Floor, Southfield, Michigan and Dentons US LLP, 233 South Wacker Drive, Suite 7800, Chicago, Illinois Petitioner consents to service by at FPGP0104IPR2@brookskushman.com and iptdocketchi@dentons.com. III. GROUNDS FOR STANDING 37 C.F.R (a) Petitioner certifies that the 634 Patent is available for inter partes review and that the Petitioner is not barred or estopped from requesting inter partes review challenging the claims of the 634 Patent on the grounds in this Petition. IV. OVERVIEW OF CHALLENGE - 37 C.F.R (b) Inter partes review of the 634 Patent s Challenged Claims is requested on the ground listed below, based on the following prior art: 1. The 455 PCT Publication ( 455 PCT Publ., Ex. 1153), which published on March 23, 2000, is prior art under 35 U.S.C. 102(b). (See page 2; see also IPR Decision, Ex at 10.) The 455 PCT Publication published more 4

11 than one year before the April 2, 2001 effective filing date of the Challenged Claims. (Id.; See also Stein Decl., Ex. 1152, ) 2. U.S. Patent No. 5,343,970 (Severinsky 970, Ex. 1154), which issued on September 6, 1994, is prior art under 35 U.S.C. 102(b). Although Severinsky 970 and the 634 Patent share a common inventor, Severinsky 970 is not part of the 634 Patent Family. (See also Stein Decl., Ex. 1152, ) Ground of Unpatentability for U.S. Patent No. 7,237,634 Ground Reference(s) Basis Challenged Claims PCT Publication and , 68-77, , , Severinsky , 293 and 298 V. CLAIM CONSTRUCTION 37 C.F.R (b)(3) Per the claim construction standard for an inter partes review, Petitioner bases this petition on the broadest reasonable interpretation of the claim language. Solely for purposes of this proceeding, the following discussion proposes construing one claim term. Under the broadest reasonable interpretation standard, Petitioner proposes that all claim terms should be entitled to their plain and ordinary meaning, with the exception of the maximum DC voltage limitation in claims 61, 73, 247 and 273, which requires clarification based on the context of the claim. Other than 5

12 the claims, the term maximum DC voltage does not appear in the specification of the 634 Patent. 1 Claims 61, 73, 247 and 273 each recite a ratio of maximum DC voltage on the DC side of at least said first AC-DC converter coupled to said second electric motor to current supplied from said battery to at least said first AC-DC converter, when maximum current is so supplied, is at least 2.5. Because the claim addresses a ratio of maximum DC voltage... to current supplied... when maximum current is so supplied, the claimed maximum DC voltage is a voltage under load value as opposed to a nominal, open-circuit voltage. This construction is also consistent with the 634 specification, which distinguishes a nominal voltage from a voltage under load, and then uses the voltage under load values for the ratio calculations. ( 634 Patent, Ex. 1151, 50:51-65 and 51:13-26; Stein Decl., Ex. 1152, ) Accordingly, under the broadest reasonable construction standard, maximum DC voltage should be construed to mean maximum DC voltage under load. This is also consistent with the Board s determination in IPR (IPR Decision, Ex at 7.) 1 In this Petition, quoted claim language is italicized for ease of reference. Petitioner will occasionally add boldface or underlining to certain language for emphasis. 6

13 VI. PRIORITY DATE OF THE CHALLENGED CLAIMS A. The 634 Patent Family The 634 Patent is a divisional in an extensive chain of filings that claims priority to two separate provisional applications Provisional Appl. No. 60/100,095 ( the 095 Provisional Application, Ex. 1158), filed September 14, 1998, and Provisional Appl. No. 60/122,296 ( the 296 Provisional Application, Ex. 1159), filed March 1, The diagram below shows the 634 Patent (highlighted in green), its ancestors, and other relevant family members. Significant to this Petition, the 634 Patent s priority claim extends through, among other applications, continuation-in-part ( CIP ) U.S. Patent No. 6,554,088 ( the 088 CIP Patent, Ex (highlighted in yellow)), which issued from CIP Application No. 09/822,866 ( the 866 CIP Application, Ex. 1161). The 866 CIP Application is a CIP of two applications, U.S. Application No. 09/264,817 ( the 817 Application, Ex. 1162) and U.S. Application No. 09/392,743 ( the 743 Application, Ex. 1163). (See Stein Decl., Ex. 1152, ) 7

14 B. The Electrical Limitations in the Challenged Claims Are Unsupported Before April 2, 2001 The electrical limitations are disclosed for the first time in the 866 CIP Application under a section entitled Further Improvements According to the Continuation-in-Part -- a section that includes new matter not disclosed in either of the 866 CIP Application s parents, the 817 and 743 Applications. ( 866 CIP Application, Ex at 89:18; Stein Decl., Ex. 1152, 100.) Per Patentee s own admission, these electrical limitations are new matter. During prosecution of the 634 Patent, Patentee asserted that new claims have been added reciting specifics of the preferred ranges of voltage and current, and their ratio. ( 634 File History, Ex at and 311.) The Patentee further stated that support for these claims is found in pages of the application text, i.e., the CIP Further Improvements section. ( 634 File History, Ex at 94-96, 311; 762 Application, Ex at 88-90; see also Stein Decl., Ex. 1152, ) The determination of a priority date for claims in a CIP application depends on when the claimed subject matter first appeared in the chain of patent disclosures. Augustine v. Gaymar, 181 F.3d 1291, 1302 (Fed. Cir. 1999). The test for whether a priority application supports later claimed limitations is whether the disclosure of the priority application reasonably conveys that the inventor had possession of the later claimed subject matter at the time that the priority application was filed. Augustine, 181 F.3d at 1302 (emphasis added). A description that merely renders the invention 8

15 obvious does not satisfy the requirement of adequate support for the claimed invention of the later filed claims. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, (Fed. Cir. 1997). Rather, the priority application itself must describe the invention. PowerOasis v. T-Mobile, 522 F.3d 1299, 1306 (Fed. Cir. 2008). 1. The At Least 2.5 Ratio Is Unsupported Before April 2, 2001 Claims 56-68, 61-65, 68-70, 73-77, , , and of the 634 Patent include a ratio of maximum DC voltage... to [maximum] current supplied (the maximum voltage-to-current ratio ) of at least 2.5. This limitation is not supported by the pre- 866 CIP Application filings. The at least 2.5 maximum voltage-to-current ratio is disclosed for the first time in the Further Improvements According to the Continuation-in-Part section of the 866 CIP Application. (Stein Decl., Ex. 1152, ) Prior to the 866 CIP Application, there is no suggestion that the ratio of maximum voltage-to-current supplied is a relevant parameter, let alone that the ratio should be at least 2.5. (Id. at ) The 817 Application s vague preference for relatively high voltage and relatively low current is insufficient to lead a person of ordinary skill in the art ( POSA ) to the at least 2.5 ratio. (See 817 Application, Ex at 20:1-4; Stein Decl., Ex. 1152, 122 and 129.) Such imprecise language cannot constitute a defined genus. MPEP 2163; In re Lukach, 442 F.2d 967, 969 (CCPA 1971). 9

16 As the filings prior to the 866 CIP Application fail to reasonably convey to a POSA that the inventor had possession of the at least 2.5 maximum voltage-tocurrent ratio, the above-identified claims are entitled to an April 2, 2001 priority date the filing date of the 866 CIP Application. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 135 (Fed. Cir. 2010) (en banc). This is consistent with the Board s determination in IPR (IPR Decision, Ex at 10.) 2. The Maximum Voltage Limitation Is Unsupported Before April 2, 2001 Claims 59, 71, 245 and 271 of the 634 Patent recite a maximum DC voltage is at least approximately 500 volts. Claim 292 similarly recites wherein energy originating at the battery is supplied to the solid state inverter at a DC voltage having a peak of at least 500 volts. For ease of reference, both limitations will be referenced as the maximum voltage limitation. This limitation is not supported by the pre- 866 CIP Application filings. Like the at least 2.5 maximum voltage-to-current ratio limitation, the maximum voltage limitation is disclosed for the first time in the 866 CIP Application. (Stein Decl., Ex. 1152, ) In each of the 817 and 743 Applications, a single open-circuit voltage is provided, 768 volts and 800 volts respectively, with no hint of a maximum voltage threshold or a broader range. ( 817 Application, Ex at 50:34-35; 743 Application, Ex at 34:25-28). Thus, nothing in the earliest priority 10

17 filings conveys that the inventor had possession of the maximum voltage limitation. (Stein Decl., Ex. 1152, and 143.) The maximum voltage limitation is new matter introduced in the 866 CIP Application under the Further Improvements According to the Continuation-in- Part section. In that CIP section, Patentee introduces the idea that high voltages of 500v for a 3000lb vehicle and 800v for a larger vehicle are required. ( 866 CIP Application, Ex at 89:23-90:28, emphasis added.) From the lack of description of the at least 500 volts range and Patentee s own admission that the maximum voltage limitation is new matter it is clear that the above-identified claims of the 634 Patent are entitled to a priority date no earlier than the filing date of the 866 CIP Application - April 2, This is consistent with the Board s determination in IPR (IPR Decision, Ex at 7.) 3. The Maximum Current Limitation Is Unsupported Before April 2, 2001 Claims 60, 72, 246 and 272 of the 634 Patent recite maximum current... is less than approximately 150 amperes. Claim 298 similarly recites wherein energy originating at the battery is supplied to the solid state inverter at a maximum current of no more than 150 amperes. For ease of reference, both limitations will be referred to as the maximum current limitation. This limitation is not supported by the pre- 866 CIP Application filings. 11

18 Of the pre- 866 CIP Application filings, only the 817 Application includes any description of current conditions. The 817 Application states that current through the required components should be limited to amperes. ( 817 Application, Ex at 50:22-28.) Nothing in the earliest priority filings conveys that the inventor had possession of a maximum current limit of less than approximately 150 amperes. (Stein Decl., Ex. 1152, ) Like the other electrical limitations, by Patentee s own admission, the maximum current limitation is new matter disclosed for the first time in the Further Improvements section of the 866 CIP Application. (Stein Decl., Ex. 1152, ) In that CIP section, Patentee introduces the idea that, for a relatively heavy vehicle, a maximum current of 153 amperes should be produced. ( 866 CIP Application, Ex at 90:15-28.) Patentee then relies on this CIP section as support for its less than approximately 150 amperes claim amendment. ( 634 File History, Ex.1164 at 94-96, 256, 311; Stein Decl., Ex. 1152, 151.) The lack of disclosure of the maximum current limitation together with Patentee s own new matter admission make it clear that the above-identified claims are entitled to a priority date no earlier than the filing date of the 866 CIP Application -- April 2,

19 C. An Insolubly Vague Incorporation by Reference Has No Impact Despite the lack of support for the electrical limitations, and Patentee s admissions to that effect, Patentee may argue that an incorporation by reference clause allows it to reach back selectively into Severinsky 970 to fill the void. However, the incorporation by reference clause is fatally ambiguous and regardless does not fill the void. First, to incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates, using the one of ordinary skill in the art standard. Zenon Environmental, Inc. v. United States Filter Corp., 506 F.3rd 1370, (Fed. Cir. 2007, emphasis added). The relevant language in the 634 Patent, which is included in each ancestor application, states: [1] This application discloses a number of improvements over and enhancements to the hybrid vehicles disclosed in U.S. Pat. No. 5,343,970 ( the 970 Patent ), to one of the present inventors, which is incorporated herein by this reference. [2] Where differences are not mentioned, it is to be understood that the specifics of the vehicle design shown in the 970 Patent are, applicable to the vehicles shown herein as well. ( 634 Patent, Ex. 1151, 10:40-47, reference numerals and emphasis added.) This seemingly inconsistent, negative provision fails to describe with detailed particularity the scope of the incorporation. To give meaning to the second, more 13

20 specific clause, the incorporation must be limited to exclude any differences between Severinsky 970 and the 634 Patent. Because the term differences is not explained, it is impossible for one skilled in the art to ascertain the scope of the incorporation. (Stein Decl., Ex. 1152, ) An insolubly ambiguous incorporation clause is afforded no weight. Hollmer v. Harari, 681 F.3d 1351, 1358 (Fed. Cir. 2012). Second, even if the entire Severinsky 970 patent were incorporated into the ancestor applications of the 634 Patent, written description support for the electrical current ratio is still lacking. Nothing in Severinsky 970 teaches the claimed ratio boundary of at least 2.5. (Stein Decl., Ex. 1152, 155.) On the contrary, if a ratio is calculated from the single set of maximum voltage and maximum current values supplied in Severinsky 970, 1400 volts and 50 amperes respectively, that ratio would be 28:1, which is an order of magnitude from 2.5:1. (Id.) Severinsky 970 simply lacks the disclosure required to support the claimed ratio s lower limit of 2.5, not to mention a sufficient number of embodiments to support an unbounded range. Ariad Pharm. 598 F. 3d at 1351; In re Wertheim 541 F. 2d 257, (CCPA 1976). Likewise, the Severinsky 970 disclosure that current should be less than 75 amperes and is preferably in the ampere range (Severinsky 970, Ex. 1154, 19:39-49) fails to support the claimed maximum current upper limit of 150 amperes. Finally, while Severinsky 970 teaches that typical maximum voltages are between 500 and 14

21 1500 volts (Id.), these voltages values do not support an unbounded range, as required by the claimed at least approximately 500 volts limitation. Further, Severinsky 970 does not state that these voltages values are under load. Finally, by Patentee s own admission, the electrical limitations were deemed Further Improvements in the 866 CIP Application, filed more than eight years after the Severinsky 970 filing date. (Stein Decl., Ex. 1152, 113.) In sum, under any set of arguments, the Challenged Claims are entitled to a priority date no earlier than April 2, 2001, i.e., the filing date of the 866 CIP Application. VII. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD AND THE RELEVANT TIMEFRAME The relevant field for purposes of the 634 Patent is systems, methods and apparatuses for controlling and operating a hybrid electric vehicle ( HEV ), and methods for improving fuel economy and reducing emissions. ( 634 Patent, Ex. 1151, col. 1:21-29 ( Field of the Invention ).) Within a given field, the level of ordinary skill in the art is evidenced by the prior art references of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did not err in adopting the approach that the level of skill in the art was best determined by the references of record). With that in mind, as of April 2, 2001, the earliest possible priority date of the claims of the 634 Patent, a person of ordinary skill in the art typically would have 15

22 possessed: 1) a graduate degree in mechanical, electrical or automotive engineering with at least some experience in the design and control of combustion engines, electric or hybrid electric vehicle propulsion systems, or design and control of automotive transmissions, or 2) a bachelor s degree in mechanical, electrical or automotive engineering and at least five years of experience in the design and control of combustion engines, electric vehicle propulsion systems, or automotive transmissions. (Stein Decl., Ex. 1152, ) VIII. STATE OF THE ART While hybrid electric vehicles (HEVs) date back over 100 years, the Clean Air Act and other regulatory events in the 1960s and 1970s spurred a renewed interest in HEV R&D. (Stein Decl. Ex. 1152, ) By September 1998, three architectures were well known: series HEVs that mechanically connected and used the motor to supply all propulsive torque to the wheels; (2) parallel HEVs, like that discussed in Severinsky 970, that used an engine and motor either separately or in combination to provide the required torque to the wheels; and (3) series-parallel HEVs like the architecture described in the 455 PCT Publication that have a second motor/generator that can operate in both a parallel mode and a series mode. See Kozo Yamaguchi et al., Development of a New Hybrid System Dual System, SAE Technical Paper (February 1996) ( Yamaguchi Paper, Ex ) (Stein Decl., Ex. 1152, ) Engine control strategies were 16

23 likewise developed to limit operation of the engine to its most efficient operating range and thus minimize noxious emissions and energy consumption. (Stein Decl., Ex. 1152, ) Indeed, the control strategy presented in Severinsky 970 is the same as that set forth in the Challenged Claims. (Id. at ) Similarly, the desired electrical characteristics of HEV systems were known at least as early as (Id. at ) A General Electric R&D report expressed the desirability of high voltage and low current systems in hybrid electric vehicle design. General Electric Company, Corp. Research & Dev., Near-Term Hybrid Vehicle Program, Final Report - Phase 1 (October 1979) ( GE Final Report, Ex at 504, 523). Severinsky 970 also articulates a preference for high voltage/low current hybrid systems that include an AC traction motor with a bi-directional AC/DC converter. (Severinsky 970, Ex. 1154, 5:60-6:17; Stein Decl., Ex. 1152, ) In fact, Severinsky 970 discloses (1) a specific high voltage under load value (1400V at the maximum) and (2) a maximum current supplied value (50A) that (3) amount to a maximum voltage to maximum current supplied ratio of 28 (1400V/50A = 28): As indicated above, for minimum cost and minimum losses the electrical circuits connecting the battery and the motor via the controller should operate at low current and relatively high voltage. The current should be less than 75 amperes and is preferably in the ampere range; in the example given above of a horsepower motor operating at 50 amperes maximum current to power a 3,300 pound vehicle, the DC voltage will be 1,000 to 1,400 volts. 17

24 (Severinsky 970, Ex at 19:39-47, emphasis added.) As detailed herein, Patentee later claimed ranges encompassing these values in the 634 Patent. IX. OVERVIEW OF THE 634 PATENT A. Background The 634 Patent is directed to a hybrid vehicle design that includes an internal combustion engine ( engine ), traction motor, starter motor and battery bank, all controlled by a microprocessor. ( 634 Patent, Ex. 1151, Abstract.) The microprocessor generally controls the operational mode of the hybrid vehicle so that the engine operates only under conditions of high efficiency in order to improve fuel economy. ( 634 Patent, Ex. 1151, Abstract, 13:24-36.) The 634 Patent admits that the prior art, including the [Severinsky] 970 Patent, clearly discloses the desirability of operating an internal combustion engine in its most efficient operating range. ( 634 Patent, Ex. 1151, 11:26-32.) During prosecution, as part of a preliminary amendment, the Patentee cancelled the 16 originally filed claims, and added 59 new claims. ( 634 File History, Ex at ; Stein Decl., Ex. 1152, ) Ultimately, through a first claim amendment, most of the claims were allowed by filing a terminal disclaimer involving the 347 Patent and converting certain claims into independent form. ( 634 File History, Ex at ; Stein Decl., Ex. 1152, ) Along with this first 18

25 claim amendment, Patentee added 261 new claims, which were allowed without further prosecution. ( 634 File History, Ex at and ; Stein Decl., Ex. 1152, ) B. Purported Invention The Challenged Claims exemplified by dependent claims (directed to a maximum voltage-to-current ratio, a maximum voltage, and a maximum current, respectively) are directed to a well-known hybrid vehicle topology and controls, with electrical components providing a relatively high maximum voltage-to-current ratio. (Stein Decl., Ex. 1152, ) 1. The Claimed Control Methodology, HEV Architecture and General Electrical Characteristics are Old The hybrid vehicle topology recited in non-challenged independent claims 33, 241 and 267 is a one-motor parallel HEV an architecture that has been around since at least (See Reinbeck, Ex. 1169, 2:45-53; Stein Decl., Ex. 1152, ) The hybrid vehicle topology recited in non-challenged independent claim 1 and challenged independent claims 292 and 298 is a well-known series-parallel HEV. (See Yamaguchi Paper, Ex at 4; Stein Decl., Ex. 1152, 69.) Microcontroller-based engine operation in HEVs also dates back to at least (See Kawakatsu, Ex. 1170, Fig. 4; Stein Decl., Ex. 1152, 70.) The desirability of high voltage and low current systems in HEV design was known at least as early as (GE Final Report, Ex at 19

26 504, 523; Stein Decl., Ex. 1152, ) Indeed, as discussed below, the 455 PCT Publication describes all of the features of the 634 Patent s claimed topology and control methodology, while Severinsky 970 discloses electrical characteristics that anticipate the electrical limitations recited in the Challenged Claims. 2. The Claimed Voltage to Current Ratio of At Least 2.5 Is Arbitrary and Old Other than a general statement that the ratio appears useful in sizing components with respect to one another, the 634 Patent offers no other explanation or examples to support the 2.5:1 ratio demarcation. ( 634 Patent, Ex. 1151, 50:44-50.) No specific function is set forth for the 2.5:1 ratio lower limit. (Stein Decl., Ex. 1152, ) It appears to be an arbitrary byproduct of other conventional design parameters. (Id. at ) The apparent usefulness of a maximum voltage-to-current ratio of at least 2.5 seems to stem from a desire to obtain unbounded claim protection for all ratios above that of the Toyota Prius. The 634 Patent describes a Toyota Prius hybrid on the market in which the ratio between the voltage under load and the peak current is only about 2 (=230V/120A). ( 634 Patent, Ex. 1151, 50:66-51:12; Stein Decl., Ex. 1152, 79.) Patentee contends that a maximum DC voltage under load to maximum current ratio of at least 2.5 allows adequate acceleration from low speeds without use of torque from the ICE. ( 634 Patent, Ex. 1151, 51:13-18.) This is inaccurate. Numerous all-electric vehicles that do not even have an ICE provide more than 20

27 adequate acceleration at low speeds despite having a maximum DC voltage to maximum current ratio of less than 2.5. (Stein Decl., Ex. 1152, ) Whatever the rationale, as detailed below, Severinsky 970 discloses examples that meet the maximum voltage-to-current ratio limitation of at least The Maximum DC Voltage and Maximum Current Limitations Are Old As discussed above, Severinsky 970 does not teach the maximum DC voltage and maximum current ranges at least approximately 500 volts and less than approximately 150 amperes claimed in the 634 Patent. But Severinsky 970 does disclose examples current less than 75 amperes and maximum voltage of 1,400 volts that are within the claimed ranges and, therefore, sufficient to render the claims unpatentable. In re Lukach, 413 F.2d 967, (CCPA 1971). X. GROUND OF UNPATENTABILITY A. Claims 56-65, 68-77, , 292, 293, 303 and 305 Are Obvious Over the 455 PCT Publication In View of Severinsky 970 The 455 PCT Publication s specification is a combination of the specifications of the 817 and 743 Applications the great grand-parents of the 634 Patent. (Stein Decl., Ex. 1152, ) As a related application having a substantially common specification and many of the same figures as the 634 Patent, the 455 PCT Publication satisfies the general hybrid configuration and torque control strategies in 21

28 the Challenged Claims. Severinsky 970 discloses similar hybrid vehicle and torque control strategies and further teaches the claimed electrical limitations. As Severinsky 970 is expressly referenced throughout the 455 PCT Publication as a precursor to the later filing, one skilled in the art would have ample reason to combine the teachings of both. The rationale for combining the teachings of Severinsky 970 with those of the 455 PCT Publication is explained in detail in section X.B beginning on page 57. Additional details regarding the 455 PCT Publication and Severinsky 970 are set forth in the Declaration of Dr. Stein (Stein Decl., Ex. 1152) at Non-Challenged Independent Base Claims All the limitations in the non-challenged independent base claims are described in the 634 Patent s disclosure that is common with the prior art 455 PCT Publication. Thus, the 455 PCT Publication alone anticipates all the limitations in the non-challenged independent base claims, as set forth below with specific references to the 455 PCT Publication. (Stein Decl., Ex. 1152, ) a. Independent Claim 33 U.S. Patent No. 7,237,634 [33.0] A method for controlling a hybrid vehicle, comprising: 455 PCT Publication 21. A method for controlling the operation of a hybrid vehicle operable in a plurality of differing modes... ( 455 PCT Publication, Ex at 79, claim 21.) (See Stein Decl., Ex. 1152, ) 22

29 A microprocessor-based control strategy is employed to control the various components of the hybrid vehicle drive system in different modes, depending on... operating parameters. The mode of operation is selected by the microprocessor in response to a control strategy resulting in improved fuel economy and reduced emission. ( 455 PCT Publication, Ex. 1153, Abstract, emphasis added.) Figure 4 of the 455 PCT Publication illustrates the principle components of the [hybrid vehicle] drive system... and various control signals, as annotated below. (Id. at 28:13-17.) 455 PCT Publication, Ex. 1153, Fig. 4 (annotated) 23

30 Figure 9 of the 455 PCT Publication depicts a flow chart of the algorithm employed by the microprocessor to implement the control strategies. (Id. at 28:35-37.) Several of the greater than ( > ) and less than ( < ) signs in Figure 9 are incorrectly oriented based on the associated description and pure logic. (Stein Decl., Ex. 1152, 177.) 455 PCT Publication, Ex. 1153, Fig. 9 (annotated) 24

31 U.S. Patent No. 7,237,634 [33.1] determining instantaneous road load (RL) required to propel the hybrid vehicle responsive to an operator command; [33.2] operating at least one electric motor to propel the hybrid vehicle when the RL required to do so is less than a setpoint (SP); [33.3] operating an internal combustion engine of the hybrid vehicle to propel the hybrid vehicle when the RL required to 455 PCT Publication Claim wherein said signal indicative of the instantaneous road load experienced by said vehicle is determined by said controller at least in part by monitoring commands provided by the vehicle operator. ( 455 PCT Publication, Ex at 76, claim 3, emphasis added.) [W]hen the microprocessor detects that transition between regions I and IV is required (e.g., the microprocessor can effectively determine the road load by monitoring the response of the vehicle to the operator's command for more power), it causes the starting motor 21 to spin the engine 40 to relatively high speed. (Id. at 53:25-29, emphasis added.) (See Stein Decl., Ex. 1152, ) Claim wherein said vehicle is propelled by torque provided by said traction motor in response to energy supplied from said battery bank, while RL < SP, wherein SP is a setpoint expressed as a predetermined percentage of MTO. ( 455 PCT Publication, Ex at 76, claim 4, emphasis added.) Fig. 6 shows that during city driving (mode I), defined in this example as driving where the vehicle s instantaneous torque requirements, or 'road load', is up to 30% of the engine s maximum torque, the vehicle is operated as a 'straight electric' car, the clutch being disengaged and energy from the battery bank 22 being used to power traction motor 25 to propel the vehicle, as long as the battery remains charged to between 50 and 70% of its full charge. (Id. at 53:5-12, emphasis added.) (See Stein Decl., Ex. 1152, ) Claim wherein said vehicle is propelled by torque provided by said engine in response to supply of combustible fuel, while SP < RL < 100% of MTO. ( 455 PCT Publication, Ex at 76, claim 4, emphasis added.) During highway cruising, region IV, where the road load is between about 30% and 100% of the engine s maximum torque output, the engine alone is used to propel the vehicle. (Id. at 25

32 U.S. Patent No. 7,237,634 do so is between the SP and a maximum torque output (MTO) of the engine, wherein the engine is operable to efficiently produce torque above the SP, and wherein the SP is substantially less than the MTO; [33.4] operating both the at least one electric motor and the engine to propel the hybrid vehicle when the torque RL required to do so is more than the MTO; and [33.5] monitoring patterns of vehicle operation over time and varying the SP accordingly. 53:22-24.) 455 PCT Publication While the road load RL remains within the engine s efficient operating range, e.g., while 30% MTO > RL > 100% of MTO, the vehicle is operated in mode IV. (Id. at 56:22-25, emphasis added.) (See Stein Decl., Ex. 1152, ) Claim wherein said vehicle is propelled by torque provided by said engine in response to supply of combustible fuel and by torque provided by said traction motor in response to energy supplied from said battery bank, while RL > 100% of MTO. ( 455 PCT Publication, Ex at 76, claim 4, emphasis added.) [W]hen the microprocessor detects that the road load exceeds 100% of the engine s maximum torque output, it controls inverter/charger 27 so that energy flows from battery bank 22 to traction motor 25, providing torque propelling the vehicle in addition to that provided by engine 40. (Id. at 54:10-16, emphasis added.) (See Stein Decl., Ex. 1152, ) Claim wherein said setpoint SP may be varied by said controller in response to monitoring patterns of vehicle operation over time. ( 455 PCT Publication, Ex at 77, claim 7.) It is also within the scope of the invention for the microprocessor to monitor the vehicle s operation over a period of days or weeks and reset this important setpoint in response 26

33 U.S. Patent No. 7,237, PCT Publication to a repetitive driving pattern. (Id. at 58:30-33.) (See Stein Decl., Ex. 1152, ) b. Independent Claim 241 Independent claim 241 is also a method claim where certain limitations are duplicative of claim 33, as referenced in the claim chart below. (Stein Decl., Ex. 1152, ) U.S. Patent No. 7,237,634 [241.0] A method for controlling a hybrid vehicle, comprising: [241.1] determining instantaneous road load (RL) required to propel the hybrid vehicle responsive to an operator command; [241.2] operating at least one electric motor to propel the hybrid vehicle when the RL required to do so is less than a setpoint (SP); [241.3] operating an internal combustion engine of the hybrid vehicle to propel the hybrid vehicle when the RL required to do so is between the SP and a maximum torque output (MTO) of the engine, wherein the engine is operable to efficiently produce torque above the SP, and wherein the SP is substantially less than the MTO; and [241.4] operating both the at least one electric motor and the engine to propel the hybrid vehicle when the torque RL required to do so is more than the MTO; 455 PCT Publication See limitation [33.0], page 22. See limitation [33.1], page 25. See limitation [33.2], page 25. See limitation [33.3], page 25. See limitation [33.4], page

34 U.S. Patent No. 7,237,634 [241.5] controlling said engine such that combustion of fuel within the engine occurs substantially at a stoichiometric ratio, wherein said controlling the engine comprises limiting a rate of change of torque output of the engine; and [241.6] if the engine is incapable of supplying instantaneous torque required to propel the hybrid vehicle, supplying additional torque from the at least one electric motor. 455 PCT Publication [T]he rate of change of engine torque is limited; this provides sufficient time for the essentially conventional electronic engine management and electronic fuel injection systems, which comprise a lambda sensor 104 (Fig. 3) for monitoring the oxygen content of the exhaust gas stream as an indication of stoichiometric combustion, to respond as the load changes, preserving stoichiometric combustion and reducing emission of unburned fuel. ( 455 PCT Publication, Ex at 57:13-21, emphasis added.) (See Stein Decl., Ex. 1152, 211.) [W]hen the vehicle s torque requirement exceeds the instantaneous engine output torque, as at points E - G and P, one or both of the traction and starting motors 25 and 21 are powered to provide additional torque to the road wheels, that is, the vehicle is operated in mode V. ( 455 PCT Publication, Ex at 56:18-22.) (See Stein Decl., Ex. 1152, ) c. Independent Claim 267 Independent claim 267 is also a method claim where certain limitations are duplicative of claim 33, as referenced in the claim chart below. (Stein Decl., Ex. 1152, ) U.S. Patent No. 7,237,634 [267.0] A method for controlling a hybrid vehicle, comprising: 455 PCT Publication See limitation [33.0], page

35 U.S. Patent No. 7,237,634 [267.1] determining instantaneous road load (RL) required to propel the hybrid vehicle responsive to an operator command; [267.2] operating at least one electric motor to propel the hybrid vehicle when the RL required to do so is less than a setpoint (SP); [267.3] operating an internal combustion engine of the hybrid vehicle to propel the hybrid vehicle when the RL required to do so is between the SP and a maximum torque output (MTO) of the engine, wherein the engine is operable to efficiently produce torque above the SP, and wherein the SP is substantially less than the MTO; [267.4] operating both the at least one electric motor and the engine to propel the hybrid vehicle when the torque RL required to do so is more than the MTO; and [267.5] rotating the engine before starting the engine such that its cylinders are heated by compression of air therein. 455 PCT Publication See limitation [33.1], page 25. See limitation [33.2], page 25. See limitation [33.3], page 25. See limitation [33.4], page 26. When this is detected by microprocessor 48, starting motor 21 spins the engine 40 at relatively high speed... When the engine reaches the desired starting speed... the engine is started... As the engine is already rotating at relatively high speed, and will have been warmed by compression of air in its cylinders during the starting process, it begins to produce useful torque almost immediately, as indicated at D. ( 455 PCT Publication, Ex at 56:5-17, emphasis added.) (See Stein Decl., Ex. 1152, ) 29

36 d. Independent Claim 1 Independent claim 1 is an apparatus claim describing a well-known seriesparallel hybrid vehicle architecture as shown in Figure 4 of the 455 PCT Publication, which also appears as Figure 4 in the 634 Patent. (Stein Decl., Ex. 1152, 221.) 455 PCT Publication, Ex. 1153, Fig. 4 (annotated) U.S. Patent No. 7,237,634 [1.0] A hybrid vehicle, comprising: 455 PCT Publication A hybrid vehicle comprising an internal combustion engine controllably coupled to road wheels of the vehicle by a clutch, a traction motor coupled to road wheels of said vehicle, a starting motor coupled to the engine, both motors being operable as generators, a battery bank for providing electrical energy to and accepting energy from said motors, and a microprocessor for controlling these 30

37 U.S. Patent No. 7,237, PCT Publication components is operated in different modes, depending on the vehicle's instantaneous torque requirements, the state of charge of the battery bank, and other operating parameters. ( 455 PCT Publication, Ex. 1153, Abstract, Fig. 4.) (See Stein Decl., Ex. 1152, ) [1.1] one or more wheels; Road wheels 34. ( 455 PCT Publication, Ex. 1153, Fig. 4.) [1.2] an internal combustion engine operable to propel the hybrid vehicle by providing torque to the one or more wheels; [1.3] a first electric motor coupled to the engine; [1.4] a second electric motor operable to propel the hybrid vehicle by providing torque to the one or more wheels; [1.5] a battery coupled to the first and second electric motors, operable to: provide current to the first and/or the second electric motors; and accept current from the (See Stein Decl., Ex. 1152, 224.) Engine 40: [A]n internal combustion engine and two separately controlled electric motors can separately or simultaneously apply torque to the driving wheels of the vehicle. ( 455 PCT Publication, Ex at 21:8-10, Fig. 4.) (See Stein Decl., Ex. 1152, ) Starting motor 21: A starting motor 21 is connected directly to the internal combustion engine 40. ( 455 PCT Publication, Ex at 34:29-30, Fig. 4.) (See Stein Decl., Ex. 1152, 227.) Traction motor 25: [D]uring low-speed operation... the vehicle is operated as a simple electric car, where all torque is provided to road wheels 34 by traction motor 25 operating on electrical energy supplied from battery bank 22. ( 455 PCT Publication, Ex at 50:25-28, Fig. 4.) (See Stein Decl., Ex. 1152, ) Battery Bank 22: The motors 21 and 25 are functional as motors or generators by appropriate operation of corresponding inverter/charger units 23 and 27, respectively, connected between the motors and battery bank 22. ( 455 PCT Publication, Ex at 34:30-33, Fig. 4.) 31