UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MERCEDES-BENZ USA, LLC, Petitioner. Patent No.

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MERCEDES-BENZ USA, LLC, Petitioner Patent No. 6,775,601 Issue Date: August 10, 2004 Title: METHOD AND CONTROL SYSTEM FOR CONTROLLING PROPULSION IN A HYBRID VEHICLE PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,775,601 PURSUANT TO 35 U.S.C. 312 and 37 C.F.R. 42.104 Case No. IPR2015-00941

TABLE OF CONTENTS LISTING OF EXHIBITS... iii I. MANDATORY NOTICES (37 C.F.R. 42.8)... 1 A. Real Parties-in-Interest (37 C.F.R. 42.8(b)(1))... 1 B. Related Matters (37 C.F.R. 42.8(b)(2))... 1 C. Counsel & Service Information (37 C.F.R. 42.8(b)(3)-(4))... 2 II. PAYMENT OF FEES (37 C.F.R. 42.103)... 2 III. REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R. 42.104)... 3 A. Grounds for Standing (37 C.F.R. 42.104(a))... 3 B. Identification of Challenge (37 C.F.R. 42.104(b)) and Relief Requested (37 C.F.R. 42.22(a)(1))... 3 C. Claim Construction (37 C.F.R. 42.104(b)(3))... 4 IV. SUMMARY OF THE 601 PATENT... 4 V. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR UNPATENTABILITY... 6 A. Ground 1: Anticipation by Ibaraki... 6 1. Ibaraki anticipates claims 8, 9, 10, 11, and 13... 8 2. Ibaraki anticipates claims 15 and 17... 19 B. Ground 2: Obviousness in View of Ikuhara...29 C. Ground 3: Obvious in view of Ikuhara over Bumby...37 D. Ground 4: Anticipation by Kawakatsu...40 E. Ground 5: Obviousness in View of Mikami...49 F. Ground 6: Obviousness in view of Mikami over Ibaraki...56 VI. CONCLUSION...59 i

EXHIBITS Exhibit 1001 Exhibit 1002 Exhibit 1003 Exhibit 1004 Exhibit 1005 Exhibit 1006 Exhibit 1007 Exhibit 1008 Exhibit 1009 Exhibit 1010 U.S. Patent No. 6,775,601 to MacBain U.S. Patent No. 5,789,882 to Ibaraki et al. Japanese language original and certified English translation of Japanese Unexamined Patent Application Publication No. 2000-87785 to Ikuhara et al. J.R. Bumby & I. Forster, Optimisation and Control of a Hybrid Electric Car, IEE Proceedings Vol. 134 Pt. D No. 6 (Nov. 1987) Giorgio Rizzoni, Unified Modeling of Hybrid Electric Vehicle Drivetrains, IEEA/SME Transactions on Mechatronics, vol. 4, no. 3, (Sept. 1999) U.S. Patent No. 6,554,088 to Severinsky U.S. Patent No. 4,335,429 to Kawakatsu U.S. Patent No. 5,839,533 to Mikami U.S. Patent No. 5,846,155 to Taniguchi Evaluation of High-Energy-Efficiency Powertrain Approaches: The 1996 Future Car Challenge by S. Sluder, M.Duoba, and R.Larsen (Society of Automotive Engineers, Feb. 1997) Exhibit 1011 Bosch Automotive Handbook (7th ed. 2007) Exhibit 1012 Exhibit 1013 Edward F. Obert, Internal Combustion Engines and Pollution (1973) Declaration of David Irick ii

Pursuant to 35 U.S.C. 311-319 and 37 C.F.R. Part 42, Mercedes-Benz USA LLC ( Petitioner ) respectfully requests inter partes review of claims 8, 9, 10, 11, 13, 15 and 17 of U.S. Patent No. 6,775,601 ( the 601 patent ). According to U.S. Patent and Trademark Office records, the 601 patent is currently assigned to Signal IP, Inc. ( Signal or the Patent Owner ). I. MANDATORY NOTICES (37 C.F.R. 42.8) A. Real Parties-in-Interest (37 C.F.R. 42.8(b)(1)) The real parties-in-interest with respect to this Petition are Mercedes-Benz USA LLC, Daimler North America Corporation, and Daimler AG. B. Related Matters (37 C.F.R. 42.8(b)(2)) The 601 patent has been asserted in the following litigations: Signal IP, Inc. v. Mercedes-Benz USA, LLC, No. 2:14-cv-03109, filed April 23, 2014 (C.D. Cal.) (the 3109 Litigation ); Signal IP, Inc. v. American Honda Motor Co., Inc., No. 2:14-cv-02454 (C.D. Cal.); Signal IP, Inc. v. Nissan North America, Inc., No. 2:14-cv-02962 (C.D. Cal.); Signal IP, Inc. v. Kia Motors America, Inc., No. 2:14-cv-02963 (C.D. Cal.); Signal IP, Inc. v. Subaru of America, Inc., No. 2:14-cv-03105 (C.D. Cal.); Signal IP, Inc. v. Volvo Cars of North America, LLC, No. 2:14-cv-03107 (C.D. Cal.); Signal IP, Inc. v. BMW of North America, LLC, et al., No. 2:14-cv-03111 (C.D. Cal.); and Signal IP, Inc. v. Ford Motor Company, No. 5:14-cv-13729 (E.D. Mich.). Petitioner was named as defendant in the 3109 Litigation and was served with a Summons and Complaint in that action on April 29, 2014. 1

The 601 patent is also the subject of ex parte re-examination proceeding No. 90/013,385 (request for re-examination granted November 19, 2014), and two petitions for inter partes review filed by the Ford Motor Company (IPR2015-00860 and IPR2015-00861). C. Counsel & Service Information (37 C.F.R. 42.8(b)(3)-(4)) Lead Counsel: Scott W. Doyle (Reg. No. 39176) Back-up Counsel: Jonathan R. DeFosse (pro hac to be requested) 1 Electronic Service: Service Address: scott.doyle@shearman.com, jonathan.defosse@shearman.com Scott W. Doyle, Shearman & Sterling LLP, 801 Pennsylvania Ave., NW, Suite 900, Washington, DC 20004. Telephone: (202) 508-8000; Facsimile: (202) 508-8100 II. PAYMENT OF FEES (37 C.F.R. 42.103) The U.S. PTO is authorized to charge the filing fee for this Petition, as well as any other fees that may be required in connection with this Petition or these 1 Petitioner requests authorization to file a motion for Jonathan R. DeFosse to appear pro hac vice as backup counsel. Mr. DeFosse is an experienced litigation attorney in patent cases and has acted as backup counsel in several IPR s. He is admitted to practice in Virginia and Washington, D.C., as well as before several United States District Courts and Courts of Appeal. Mr. DeFosse is familiar with the issues raised in this Petition because he represents Petitioner in the 3109 Litigation. 2

proceedings on behalf of Petitioner, to the deposit account of Shearman & Sterling LLP, Deposit Account 500324. III. REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R. 42.104) A. Grounds for Standing (37 C.F.R. 42.104(a)) Petitioner certifies that the 601 patent (Ex. 1001) is available for inter partes review and that Petitioner is not barred or estopped from requesting inter partes review challenging the patent s claims on the grounds identified in this petition. B. Identification of Challenge (37 C.F.R. 42.104(b)) and Relief Requested (37 C.F.R. 42.22(a)(1)) Petitioner respectfully requests that inter partes review be instituted and claims 8, 9, 10, 11, 13, 15 and 17 of the 601 patent be cancelled on the following grounds of unpatentability: Ground Claims Basis for Challenge 1 8, 9, 10, 11,13, 15, 17 Anticipation under 35 U.S.C. 102(b) by U.S. Patent No. 5,789,882 to Ibaraki et al. ( Ibaraki ) (Ex. 1002) 2 8, 13 Obvious under 35 U.S.C. 103 in view of JP Patent Application No. 2000-87785 ( Ikuhara ) (Ex. 1003) 3 8, 13 Obvious under 35 U.S.C. 103 in view of Ikuhara over J.R. Bumby & I. Forster, Optimisation and Control of a Hybrid Electric Car, IEE Proceedings Vol. 134 Pt. D No. 6 (Nov. 1987) ( Bumby ) (Ex. 1003) (Ex. 1004) 4 15, 17 Anticipation under 35 U.S.C. 102(b) in view of U.S. Patent No. 4,335,429 to Kawakatsu ( Kawakatsu ) (Ex. 1007) 5 8, 11, 13 Obvious under 35 U.S.C. 103 by U.S. Patent No. 5,839,533 to Mikami ( Mikami ) (Ex. 1008) 3

Ground Claims Basis for Challenge 6 9, 10 Obvious under 35 U.S.C. 103 in view of Mikami and Ibaraki The above-listed grounds of unpatentability are explained in detail in Section V., below. This Petition is supported by the Declaration of David Irick (Ex. 1013). C. Claim Construction (37 C.F.R. 42.104(b)(3)) A claim subject to inter partes review is given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. 42.100(b). The words of the claim are to be given their plain meaning unless it is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). For the purposes of this proceeding, no terms of the 601 patent require construction. 2 IV. SUMMARY OF THE 601 PATENT The 601 patent, entitled Method and Control System for Controlling Propulsion in a Hybrid Vehicle, was issued on August 10, 2004 and has an effective filing date of August 6, 2002. The 601 patent is generally directed to strategies for 2 As part of the 3109 Litigation, Petitioner has asserted that that the terms relatively low vehicle torque demand (claim 8) and relatively high and low efficiency (claims 15 and 17) are indefinite under 35 U.S.C. 112, paragraph 2. Patent owner has argued that these terms have a plain meaning and do not require construction. Because Petitioner cannot raise indefiniteness challenges as part of an inter partes review proceeding, Petitioner requests, for the purposes of this proceeding only, that Patent Owner s position with respect to these terms be adopted. 4

determining when to use the electric traction motor and internal combustion engine in a hybrid vehicle. (See Ex. 1001, Abstract.) The 601 patent discloses two basic embodiments. The first embodiment, represented in independent claim 8, teaches a hybrid electric vehicle control strategy that is based on the torque demand. (Id. at col. 1:51-54; 2:4-8.) In particular, when a vehicle s torque demand is within a relatively low threshold range, the electric traction motor is used to propel the vehicle, while the internal combustion engine is disengaged. (Id. at col. 1:61-65.) When the torque demand exceeds this relatively low threshold range, the electric traction motor is disengaged and the internal combustion engine is used to propel the vehicle. (Id.; see also id. at col. 4:64-5:11.) The second embodiment of the 601 patent, represented in independent claim 15, discloses a method for controlling a hybrid vehicle based on fuel efficiency of the internal combustion engine. This method maps regions of high and low efficiency of the internal combustion engine in an efficiency map. (Id. at col. 2:31-35.) When a vehicle s operating conditions would fall within a region of low fuel efficiency, the electric traction motor is used to propel the vehicle while the internal combustion engine is disengaged. (Id. at col. 2:35-40.) By contrast, when a vehicle s operating conditions would fall within a region of high fuel efficiency, the internal combustion engine is used to propel the vehicle and the electric traction motor is deactivated. (Id. at col. 2:40-45.) 5

V. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR UNPATENTABILITY A. Ground 1: Anticipation by Ibaraki Claims 8-11,13, 15, and 17 of the 601 patent should be invalidated because those claims are anticipated under 35 U.S.C. 102(b) by U.S. Patent No. 5,789,882 to Ibaraki (Ex. 1002). Ibaraki, entitled Vehicle Control Apparatus Adapted to Select Engine-Or Motor-Drive Mode Based on Physical Quantity Reflecting Energy Conversion Efficiencies in Motor-Drive Mode, was issued on August 4, 1998 and therefore qualifies as prior art to the 601 patent under 102(b). Ibaraki was not before or considered by the Examiner during prosecution of the 601 patent. As a general matter, Ibaraki discloses a drive control apparatus for determining when to engage the electric traction motor of a hybrid vehicle. (Ex. 1002, Abstract.) Ibaraki discloses that the drive control apparatus can select between three modes of operation: (1) motor drive mode in which the vehicle is driven by operation of only the [electric traction] motor ; (2) engine drive mode, in which the vehicle is driven by operation of the only [the internal combustion] engine ; and (3) engine-motor drive mode in which the vehicle is driven by operation of both the [internal combustion engine] 112 and the [electric traction] motor 114. (Ex. 1002 at col. 23:66-24:30, 20:43-49.) The drive control apparatus of Ibaraki determines whether to use the electric traction motor and/or the internal combustion engine based on whether the power 6

needed to operate the vehicle (the required drive power PL ) falls above or below the variable torque threshold represented by line B 1 in figure 11: As depicted in figures 10 (excerpted below) and 11 (above), when the required drive power PL is below torque threshold B 1, the vehicle is propelled by the electric traction motor only. (Ex. 1002, Fig. 10 at steps Q8 and Q12.) When the required drive power PL is between torque thresholds B 1 and C, the vehicle is propelled by the internal combustion engine only. (Id., Fig. 10 at steps Q9 and Q11.) When the required drive power PL is above torque threshold 7

C, both the electric traction motor and internal combustion engine are used. (Id., Fig. 10 at steps Q9 and Q10.) 1. Ibaraki anticipates claims 8, 9, 10, 11, and 13 Claim 8 of the 601 patent teaches a method of activating and deactivating an electric traction motor in a hybrid vehicle based on torque demand. Claims 9-11 and 13 each depend on claim 8. The first element of claim 8 is a control system for controlling propulsion in a hybrid vehicle including a traction motor and an internal combustion engine. In anticipation of this element, Ibaraki discloses a drive control apparatus that selects the propulsion mode for a hybrid vehicle, choosing between engine drive mode (using an internal combustion engine only), motor drive mode (using an electric traction motor only), and engine-motor drive mode (using a combination of the internal combustion engine and the electric traction motor). (Ex. 1002 at Abstract, col. 23:66-24:30, 20:43-49, Fig. 10; see also Ex. 1013, 26.) The second element of claim 8 requires a sensor coupled to sense a signal indicative of vehicle torque demand. In anticipation of this element, Ibaraki discloses the use of detecting devices that supply signals to a controller, including signals indicative of the operating amount θ A of an accelerator pedal. (Ex. 1002 at col. 12:1-4, 20:18-29.) A signal indicating the operating amount of the accelerator pedal is a signal indicative of the torque that a driver demands. (Ex. 1013, 28,30.) 8

The third element of claim 8 requires a memory for storing a threshold torque range indicative of conditions of relatively low vehicle torque demand. In anticipation of this element, Ibaraki discloses that controller 128 includes a random access memory (RAM), and a read-only memory (ROM). (Ex. 1002, col. 20:10-15.) The memory of Ibaraki stores, among other things, the data map containing threshold torque range B. (Id. at col. 8:36-51; see also Ex. 1013, 31.) As depicted in figure 11 (above), the torque range below threshold B is relatively low in comparison to the torque ranges above thresholds B and C. (Ex. 1002 at Fig. 11; Ex. 1013, 32.) The forth element of claim 8 requires a processor configured to process the signal indicative of vehicle torque demand to determine whether the vehicle torque demand is within the threshold torque range. In anticipation of this element, Ibaraki discloses a CPU that follows the steps of Figure 10. In step Q8, the CPU determines whether the required drive power PL (which is the torque requested at a particular vehicle speed) is below threshold torque line B. (Ex. 1002, col. 20:10-15, 23:66-24:37; Fig. 10; Ex. 1013, 35.) The fifth element of claim 8 requires during conditions when the signal indicative of vehicle torque demand is within the threshold torque range, an actuator configured to generate a signal configured to activate the electric traction motor to drivingly propel the vehicle while de-engaging the internal combustion engine from propelling the vehicle. In anticipation of this element, Ibaraki teaches that when the required drive power PL is below torque threshold B, then motor drive mode 9

is activated. (Id. at col. 23:66-24:16; Ex. 1013, 36.) In Motor Drive Mode, the vehicle is propelled only by the electric traction motor. (Id. at col. 20:43-45.) The sixth element of claim 8 requires that during conditions when the signal indicative of vehicle torque demand is outside the threshold torque range, the actuator configured to generate a signal configured to deactivate the electric traction motor from drivingly propelling the vehicle while re-engaging the internal combustion engine to propel the vehicle. In anticipation of this element, Ibaraki teaches that when required drive power PL is greater than torque threshold B, the engine drive mode is selected. (Id. at col. 20:63-65; Ex. 1013, 38.) The engine drive mode, only the combustion engine powers the vehicle. (Ex. 1002 at col. 20:45-47.) Claim 9 depends on claim 8 and requires a monitor configured to monitor at least one operational parameter indicative of environmental and/or operation conditions of the propulsion system of the vehicle, wherein the value of the selected threshold torque range is adjusted based on the value of the at least one operational parameter. Claim 10 depends on claim 9 and additionally requires that the operational parameter be selected from the group comprising state of charge of an energy source of the traction motor, ambient temperature, and barometric pressure. In anticipation of claims 9 and 10, Ibaraki discloses that torque threshold B can be enlarged (i.e., adjusted) to line B 2 on figure 11 (see figure, above) based on the state of charge ( SOC ) of the battery powering the electric motor. (Ex. 1002, col. 21:30-35, 21:1-4; Fig. 11; Ex. 1013, 41.) 10

Claim 11 depends on claim 8 and requires a sensor coupled to sense a state of charge of an energy source of the traction motor, said state of charge being determinative of whether the electric traction motor is activated to drivingly propel the vehicle. In anticipation of claim 11, Ibaraki discloses a drive control routine that compares the SOC to a minimum threshold level A. (Ex. 1002, Fig. 10 at step Q4.) If the SOC is less than threshold A, then the vehicle enters electricity generating drive mode in which the vehicle is propelled by the combustion engine only. (Id., Fig. 10; col. 23:6-23, 11:65-67, 23:23-30; Ex. 1013, 45.) Claim 13 depends on claim 8 and requires that the hybrid comprise a parallelhybrid. A parallel hybrid is a hybrid vehicle in which either or both of the combustion engine and traction motor drivingly propel the vehicle. (Ex. 1013, 46.) Because the vehicle of Ibaraki can be driven by either an electric motor or combustion engine, Ibaraki discloses a parallel hybrid vehicle that anticipates claim 13. (See, e.g., Ex. 1002, Abstract.) As reflected in the text above and the following claim charts, Ibaraki anticipates each and every element of claims 8-11 and 13 of the 601 patent. Claim 8 Ibaraki (Ex. 1002) [1] A control system for controlling propulsion equipment in a Col. 11:8-13: The apparatus 10 is adapted to control a so-called hybrid vehicle which is equipped with two drive sources, one of which is an internal combustion engine 12 such as a gasoline engine operated by combustion of a fuel, and the other of which is a dynamo-electric motor 14 functioning as an 11

Claim 8 Ibaraki (Ex. 1002) hybrid vehicle including a traction motor and an internal combustion engine, the control system comprising: [2] a sensor coupled to sense a signal indicative of vehicle torque demand; electric motor and an electric generator (dynamo). Col. 11:67 - Col. 12:5: The controller 26 is supplied with input signals from various detecting devices. These input signals include signals indicative of torque TE of the engine 12, a torque TM of the motor 14, an operating amount θa of an accelerator pedal, a speed NE of the engine 12, a speed NM of the motor 14... Col. 20:16-33: The controller 128 is supplied with input signals from various detecting devices. These input signals include signals indicative of a speed Ne of the engine 112, an input speed Ni of the transmission 116 (speed of the motor 114), an output speed No of the transmission 116 (which corresponding to the running speed V of the vehicle), and a charging amount SOC of the electric energy storage device 136. The input signals include: an ACCELERATOR signal indicative of an operating amount ϴ A of an accelerator pedal of the vehicle; a BRAKE signal indicating that a brake pedal of the vehicle has been depressed; a BRAKE PEDAL FORCE signal indicative of a force acting on the brake pedal; and ENGINE BRAKING SHIFT POSITION signal indicating that the shift lever 122 is placed in any one of engine braking shift positions, that is, in any one of the drive, second-speed and low-speed positions D, 2, L in which engine braking may be applied to the vehicle. Col. 12:54-64: The required drive power P L may be determined on the basis of the engine speed N E and torque T E (or the motor speed N M and torque T M ) and the amount or rate of change of the accelerator pedal operating amount θ A, and according to a predetermined relationship between the required 12

Claim 8 Ibaraki (Ex. 1002) drive power P L and these parameters. This relationship is represented by a data map stored in memory means 36 also included in the drive source selecting means 28, as indicated in FIG. 2. Other data necessary to calculate the required drive power P L are also stored in the memory means 36. See also Fig. 11 (depicting torque thresholds). [3] memory for storing a threshold torque range indicative of conditions of relatively low vehicle torque demand; Col. 8:36-51: In another preferred form of the third aspect of this invention the apparatus further comprises memory means for storing a data map representative of boundary lines which define the engine driving range and motor driving range in relation to the running condition of the vehicle, for example, in relation to a drive torque and a running speed of the vehicle. In this case the enlarging means comprises shifting means for shifting one of the boundary lines to enlarge the motor driving range. In this case, too, it is desirable that the engine driving range and the motor driving range be determined or defined on the basis of the first and second values of the physical quantity of the engine as described above with respect to the first aspect of the invention and the advantageous arrangement of the third aspect of the invention. Col. 12:59-64: This relationship is represented by a data map stored in memory means 36 also included in the drive source selecting means 28, as indicated in FIG. 2. Other data necessary to calculate the required drive power P L are also stored in the memory means 36. Col. 20:10-15: The controller 128 includes a microcomputer incorporating a central processing unit (CPU), a random-access memory (RAM), and a read-only memory (ROM). The CPU operates according to control programs stored in the ROM while utilizing a temporary data storage function of the RAM. Fig. 11: 13

Claim 8 Ibaraki (Ex. 1002) [4] a processor configured to process the signal indicative of vehicle torque demand to determine whether the vehicle torque demand is within the threshold torque range; [5] during conditions when the signal indicative of vehicle torque demand is within the threshold Col. 20:10-15: The controller 128 includes a microprocessor incorporating a central processing unit (CPU)... The CPU operates according to control programs stored in the ROM while utilizing a temporary storage function of the RAM. Col. 20:38-43: The controller 128 includes a drive source selecting means 160 illustrated in the block diagram for FIG. 9. The drive source selecting means 160 is adapted to select one or both of the engine 112 and motor 114 as the drive power source or sources, according to a drive source selecting data map stored in memory means 162. Col. 23:66 - Col. 24:2: Step Q6 and Q7 are followed by step Q8 to determine whether a point corresponding to the required drive power PL (determined by current vehicle drive torque and speed V) is located above the first boundary line B. Fig. 10 (reproduced below); Fig. 11 (reproduced above). Col. 23:66 Col. 24:16: Step Q6 and Q7 are followed by step Q8 to determine whether a point corresponding to the required drive power P L (determined by the current vehicle drive torque and speed V) is located above the first boundary line B. If a negative decision (NO) is obtained in step Q8, that is, if the point of the required drive power P L is located below the first boundary line B or in the motor driving range, the control flow 14

Claim 8 Ibaraki (Ex. 1002) torque range, an actuator configured to generate a signal configured to activate the electric traction motor to drivingly propel the vehicle while de-engaging the internal combustion engine from propelling the vehicle; and goes to step Q12 in which a sub-routine for running the vehicle in the MOTOR DRIVE mode is executed... Fig. 10 (see steps Q8 and Q12): Fig. 11 (reproduced above) [6] during conditions when the signal indicative of Col. 23:66 Col. 24:16: Step Q6 and Q7 are followed by step Q8 to determine whether a point corresponding to the required drive power P L (determined by the current vehicle drive torque and speed V) is located above the first boundary line B. If 15

Claim 8 Ibaraki (Ex. 1002) vehicle torque demand is outside the threshold torque range, the actuator configured to generate a signal configured to deactivate the electric traction motor from drivingly propelling the vehicle while re-engaging the internal combustion engine to propel the vehicle. the point of the required drive power P L is located above the first boundary line B and on or below the second boundary line C, that is, if a negative decision (NO) is obtained in step Q9, the control flow goes to step Q11 in which a sub-routine for running the vehicle in the ENGINE DRIVE mode is executed. Fig. 10 (reproduced above, see steps Q9 and Q11); Fig. 11 (reproduced above). Claim 9 Ibaraki (Ex. 1002) The control system of claim 8 further comprising a monitor configured to monitor at least one operational parameter indicative of environmental and/or operational conditions of the propulsion system Col. 21:1-4: As described below, the first boundary line B is normally located at B1, but may be shifted to B2 so as to enlarge the range in which the MOTOR DRIVE mode is selected. Col. 21:30-39: The controller 128 further includes motor driving range enlarging means 170 for enlarging the motor driving range within which the vehicle is run in the MOTOR DRIVE mode under the control of the motor driving means 166, if a regenerative charging amount SOC R is larger than a predetermined threshold. The regenerative charging amount SOCR is an amount of electric energy to be stored in the electric energy storage device 136 in the REGENERATIVE DRIVE mode under the control of regenerative driving means 168. 16

Claim 9 Ibaraki (Ex. 1002) of the vehicle, wherein the value of the selected threshold torque range is adjusted based on the value of the at least one operational parameter. Col. 21:52-56:... and shift [determining] means 178 for shifting the first boundary line B from the normal position B1 to enlarging position B2 to enlarge the motor driving range, if an affirmative decision is obtained by the regenerative charging amount determining means 176. Fig. 9: Fig. 11 (reproduced aboce, see lines B1 and B2) Claim 10 Ibaraki (Ex. 1002) 17

Claim 10 Ibaraki (Ex. 1002) The control system of claim 9 wherein the operational parameter is selected from the group comprising state of charge of an energy source of the traction motor, ambient temperature, and barometric pressure. See Claim 9, above Claim 11 Ibaraki (Ex. 1002) The control system of claim 8 further including a sensor coupled to sense a state of charge of an energy source of the traction motor, said state of charge being determinative of whether the electric traction motor is activated to drivingly propel the vehicle. Col. 23:6-23: Step Q3 is followed by step Q4 to determine whether the charging amount SOC of the electric energy storage device 136 is equal to or larger than a predetermined lower limit A or not. If an affirmative decision (YES) is obtained in step Q4, the control flow goes to step Q5 and the subsequent steps. If a negative decision (NO) is obtained in step Q4, the control flow goes to step Q16 in which a sub-routine for running the vehicle in the ELECTRICITY GENERATING DRIVE mode is implemented. The lower limit A used in step Q4 is the minimum amount of electric energy stored in the electric energy storage device 136, which mininlum amount is required for running the vehicle in the MOTOR DRIVE mode in which the motor 114 is selected as the drive power source. The lower limit A is usually determined on the basis of the charging and discharging efficiencies ηbin and ηbout and is initially set at a standard value Al which is about 70% of the nominal capacity of the device 136. for example. Fig. 10 (reproduced above, see step Q4) Claim 13 Ibaraki (Ex. 1002) The control system of claim 8 wherein the hybrid comprises a parallel-hybrid. Col. 11:5-12: Referring first to FIG. 1. one embodiment of a vehicle drive control apparatus 10 of the present invention will be described.the apparatus 10 is adapted to control a so-called hybrid vehicle which is equipped with two drive sources, one of which is an internal combustion engine 12 such as a gasoline 18

Claim 13 Ibaraki (Ex. 1002) engine operated by combustion of a fuel, and the other of which is a dynamo-electric motor 14 functioning as an electric motor and an electric generator (dynamo). 2. Ibaraki anticipates claims 15 and 17 Independent claim 15 of the 601 patent discloses a control strategy for hybrid vehicles that is based on fuel efficiency of the internal combustion engine. Claim 15 has five elements, which are reproduced in the text and charts below. Ibaraki discloses each and every element of claim 15. The first element of claim 15 requires a method for controlling a propulsion system in a hybrid vehicle including a traction motor and a propulsion unit. In anticipation of this element, Ibaraki discloses a vehicle drive control apparatus that is adapted to control a hybrid vehicle. (Ex. 1002, col. 11:5-12; Ex. 1013, 50.) Ibaraki further discloses that the hybrid vehicle is equipped with two drive sources, one of which is an internal combustion engine and the other of which is a dynamo-electric motor functioning as an electric motor and an electric generator (dynamo). (Id.) The second element of claim 15 requires the step of mapping respective regions of relatively high and low efficiency in an efficiency map for the propulsion unit. In anticipation of this element, Ibaraki discloses an efficiency data map depicted in figure 5: 19

(See also Ex. 1002 at col. 10:48-52; 13:18-24; Ex. 1013, 51.) Ibaraki explains that this efficiency data map represents regions of high and low efficiency. In particular, the hatched area of figure 5 (ηicemax) represents the maximum value of fuel consumption efficiency. (Ex. 1002 at col. 13:20-23.) Line L further indicates the maximum efficiency at any particular engine speed. (Id. at col. 26:15-25.) The efficiency then decreases from the hatched area in the outward direction away from the hatched area. (Id. at col. 13:20-23.) The third element of claim 15 requires sensing a signal indicative of said regions of relatively high and low efficiency in an efficiency map for the propulsion unit. In anticipation of this element, Ibaraki discloses that a controller is supplied with signals representing torque T E of the engine 12 and the speed N E of the engine 12. (Ex. 1002, col. 11:54-12:7.) With these signals, the fuel consumption rate FCe may be obtained from the data map of FIG. 5. (Id. at col. 12:65-13:36.) The fourth element of claim 15 requires that during conditions when the sensed signal indicates a region of low-efficiency for the propulsion unit, generating a 20

signal configured to activate the electric traction motor to drivingly propel the vehicle while de-engaging the propulsion unit from propelling the vehicle. In anticipation of this element, Ibaraki discloses a drive source selecting means 28 that determines whether to operate the vehicle in engine drive mode (internal combustion engine only) or motor drive mode (electric traction motor only) based on fuel consumption efficiency. (Ex. 1002 at col. 12:33-49; Ex. 1013, 58.) Ibaraki teaches that motor drive mode is selected in regions of low efficiency e.g., when the internal combustion engine would operate at less than 70% of its maximum efficiency (represented by the regions below the line 0.7Ƞ ICEmax in figure 5.) (Ex. 1002 at col. 25:36-63; see also id. at 26:15-25; Ex. 1013, 58.) The fifth element of claim 15 requires that during conditions when the sensed signal indicates a region of high-efficiency for the propulsion unit, generating a signal configured to deactivate the electric traction motor from drivingly propelling the vehicle while re-engaging the propulsion unit to propel the vehicle. In anticipation of this element, Ibaraki discloses that engine drive mode is selected in regions of high efficiency e.g., when the internal combustion engine would operate at 70% or greater of its maximum efficiency (represented by the regions above the line 0.7Ƞ ICEmax in figure 5.) (Ex. 1002 at col. 25:36-63; see also id. at 26:15-25; Ex. 1013, 61.) 21

Independent claim 17 is a claim to a computer-readable medium for performing the steps of claim 15. Because Ibaraki discloses a microcomputer that performs the above method that anticipates claim 15, Ibaraki also anticipates claim 17. (Ex. 1013, 63.) In particular, the microcomputer of Ibaraki ( controller 26 ) would necessarily have been programmed with segment code in order to perform its specialized functions. (Ex. 1013, 63.) Indeed, such functions could not be performed by a general purpose computer without specialized programming. (Id.) Additionally, one of skill in the art would understand that Figure 3, which is the routine executed by the drive control apparatus, and its accompanying descriptions in the text disclose the use of computer-readable media that contains segment code (i.e., instructions for the processor to follow). (Id.) Ibaraki thus discloses a computer-readable medium and segment code to perform the steps of claim 17. 3 3 To the extent the Board determines that the computer-readable medium and segment code elements of claim 17 are not expressly or inherently disclosed in Ibaraki, claim 17 would nonetheless be obvious in view of Ibaraki and the general knowledge of a person of skill in the art in August 2002. In particular, by at least August 2002, it was routine and well-understood that microcontrollers used in automotive applications required computer-readable media and segment code to perform specialized functions. (Ex. 1013, 64.) Indeed, by August 2002, it was standard practice to use computer-readable media and segment code with CPU programed to perform specialized functions, including functions such as those envisioned in Ibaraki. (Id.) The benefits of using computer-readable media and segment code are well-documented. (Id.) Under these circumstances, even if these 22

As reflected in the text above and the following claim charts, Ibaraki anticipates each and every element of claims 15 and 17 of the 601 patent. Claim 15 Ibaraki (Ex. 1002) [1] A method for controlling a propulsion system in a hybrid vehicle including a traction motor and a propulsion unit, the method comprising: Abstract: A drive control apparatus for an automotive vehicle having an electric motor and an engine operated by combustion of fuel... Col. 11:6-13: Referring first to FIG. 1, one embodiment of a vehicle drive control apparatus 10 of the present invention will be described. The apparatus 10 is adapted to control a so-called hybrid vehicle which is equipped with two drive sources, one of which is an internal combustion engine 12 such as a gasoline engine operated by combustion of a fuel, and the other of which is a dynamo-electric motor 14 functioning as an electric motor and an electric generator (dynamo). elements of claim 17 are not expressly or inherently disclosed in Ibaraki, they would have been obvious based on the general knowledge of a person of skill in the art. 23

Claim 15 Ibaraki (Ex. 1002) [2] mapping respective regions of relatively high and low efficiency in an efficiency map for the propulsion unit; Col. 10:48-52: FIG. 5 is graph showing an example of data map indicating the fuel consumption efficiency of an internal combustion engine, which data map is used by the vehicle drive control apparatus of FIG. 1. Col. 13:18-24: Ƞ ICEmax in FIG. 5 represents a maximum value of the fuel consumption efficiency Ƞ ICE (reciprocal of the fuel consumption rate FCe). The fuel consumption efficiency Ƞ ICE decreases from the hatched area in the outward direction away from the hatched area. The fuel consumption efficiency Ƞ ICE may be set with the maximum 24

Claim 15 Ibaraki (Ex. 1002) value Ƞ ICEmax being 1. [3] sensing a signal indicative of said regions of relatively high and low efficiency; Col. 11: 67 Col. 12:7: The controller 26 is supplied with input signals from various detecting devices. These input signals include signals indicative of a torque T E of the engine 12, a torque T M of the motor 14, an operating amount ϴ A of an accelerator pedal, a speed N E of the engine 12, a speed N M of the motor 14, an output speed N O of the transmission 16, and a charging amount SOC of the electric energy storage device 22. Col. 12: 65 Col. 13:17: FCe represents a fuel consumption rate (g/kwh) of the internal combustion engine 12 when the required drive power P L is provided by the engine 12. This fuel consumption efficiency FCe may be determined on the basis of the engine torque T E and speed N E, and according to a predetermined relationship between the efficiency FCe and these parameters, which relationship is represented by a data map also stored in the memory means 36. The graph of FIG. 5 shows an iso-fuel consumption rate of the engine 12. In the graph, a hatched area indicates the lowest value of the fuel consumption rate FCe at which the power per unit fuel amount is the highest. The fuel consumption rate FCe increases from the hatched area in the outward direction away from the hatched area. Since the required instantaneous drive power P L is represented by the engine speed N E and torque T E, the fuel consumption rate FCe may be obtained from the data map 25

Claim 15 Ibaraki (Ex. 1002) of FIG. 5, depending upon the required drive power P L. Data necessary to calculate the fuel consumption rate FCe are also stored in the memory means 36. Fig. 3 (reproduced above, at steps S1 and S3); Fig. 5 (reproduced above) [4] during conditions when the sensed signal indicates a region of low-efficiency for the propulsion unit, generating a signal configured to activate the electric traction motor to drivingly propel the vehicle while de-engaging the propulsion unit from propelling the vehicle; and Col. 12:8-49: The controller 26 includes drive source selecting means 28 illustrated in the block diagram of FIG. 2. The drive source selecting means 28 selectively establishes the ENGINE DRIVE mode or the MOTOR DRIVE mode. The drive source selecting means 28 includes first calculating means 30 for calculating a fuel consumption amount M fce of the engine 12 in the ENGINE DRIVE mode in which the engine 12 is selected as the drive power source for running the vehicle.... The drive source selecting means 28 also includes second calculating means 32 for calculating a fuel consumption amount M fcm of the engine 12 in the ELECTRICITY GENERATING DRIVE mode in which the motor 14 is driven by the engine 12 for charging the electric energy storage device 22 with an electric energy necessary to run the vehicle in the MOTOR DRIVE mode (with the motor 14 selected as the drive power source).... The drive source selecting means 28 further includes comparing means for comparing the calculated fuel consumption amounts M fce and M fcm, for selecting the ENGINE DRIVE mode or the MOTOR DRIVE mode. It will be understood that the drive source selecting means 28 is adapted to select the ENGINE DRIVE mode or MOTOR DRIVE mode depending upon values of a physical quantity in the form of the fuel consumption amount M fc of the engine 12, according to a predetermined rule, more specifically, on the basis of the physical quantity values in the form of the fuel consumption amounts M fcm and M fce as compared with each other, such that the MOTOR DRIVE mode is selected when the fuel consumption amount M fcm is smaller than the fuel consumption amount M fce while the ENGINE DRIVE mode is selected when the fuel consumption amount M fcm 26

Claim 15 Ibaraki (Ex. 1002) is not smaller than the fuel consumption amount M fce. Col. 15:1-15: Step S3 is implemented by the first calculating means 30 and the second calculating means 32 of the drive source selecting means 28 illustrated in FIG. 2, for calculating the fuel consumption amounts M fce and M fcm, respectively. Step S3 is followed by step S4 which is implemented by the comparing means 34 to determine whether the fuel consumption amount M fcm is smaller than the fuel consumption amount M fce. If the fuel consumption amount M fcm is smaller than the fuel consumption amount M fce, the control flow goes to step S6 in which a sub-routine for running the vehicle in the MOTOR DRIVE mode is executed. If the fuel consumption amount M fcm is larger than the fuel consumption amount M fce, the control flow goes to step S5 in which a sub-routine for running the vehicle in the ENGINE DRIVE mode is executed. Col. 18:20-33: As explained above, the present vehicle drive control apparatus 10 is adapted to run the vehicle selectively in the ENGINE DRIVE mode or MOTOR DRIVE mode so as to minimize the fuel consumption amount Mfc, and in the ELECTRICITY GENERATING DRIVE mode in which the engine output P ICE (including the surplus power) and the electricity generating power P GEN are determined so as to minimize the fuel consumption amount Mfc per unit amount of electric energy to be stored in the electric energy storage device 22, namely, so as to maximize the overall fuel consumption efficiency Ƞ T, so that the overall fuel consumption amount Mfc for running the vehicle is considerably reduced and the exhaust gas amount corresponding to the fuel consumption amount is accordingly reduced. Col. 25:46-62: [I]t is possible to select the ENGINE DRIVE mode if the fuel consumption efficiency Ƞ ICE for running the vehicle in the ENGINE DRIVE mode with the engine 12 selected as the drive power source is larger than a threshold 0.7Ƞ ICEmax indicated in FIG. 5, which threshold is 70% of the maximum fuel consumption 27

Claim 15 Ibaraki (Ex. 1002) efficiency Ƞ ICEmax, and select the MOTOR DRIVE mode if the fuel consumption efficiency Ƞ ICE is smaller than the threshold 0.7Ƞ ICEmax. This modified arrangement, which also meets the principle of the present invention, facilitates the selection of the ENGINE. DRIVE mode and the MOTOR DRIVE mode, by simply obtaining the fuel consumption efficiency Ƞ ICEmax in the ENGINE DRIVE mode. The threshold is not limited to 70% of the maximum fuel consumption efficiency Ƞ ICEmax but may be suitably determined depending upon the energy conversion efficiencies of the motor 14 and the electric energy storage device 22. Fig. 3 (reproduced above, at steps S4, S5, and S6); Fig. 5 (reproduced above) [5] during conditions when the sensed signal indicates a region of high-efficiency for the propulsion unit, generating a signal configured to deactivate the electric traction motor from drivingly propelling the vehicle while re-engaging the propulsion unit to propel the vehicle. See element 4, above Claim 17 Ibaraki (Ex. 1002) [1] A computer-readable medium including computer-readable code for causing a computer to control a propulsion system in a hybrid vehicle Col. 11:54-58: The controller 26 includes a microcomputer incorporating a central processing unit (CPU), a random-access memory (RAM), and a 28

Claim 17 Ibaraki (Ex. 1002) including a traction motor and a propulsion unit, the computer-readable medium comprising: [2] segment code for mapping respective regions of relatively high and low efficiency in an efficiency map for the propulsion unit; [3] segment code for sensing a signal indicative of said regions of relatively high and low efficiency; [4] during conditions when the sensed signal indicates a region of low-efficiency for the propulsion unit, segment code for generating a signal configured to activate the electric traction motor to drivingly propel the vehicle while de-engaging the propulsion unit from propelling the vehicle; and [5] during conditions when the sensed signal indicates a region of high-efficiency for the propulsion unit, segment code for generating a signal configured to deactivate the electric traction motor from drivingly propelling the vehicle while re-engaging the propulsion unit to propel the vehicle. read-only memory (ROM). The CPU operates according to control programs stored in the ROM while utilizing a temporary data storage function of the RAM. See also claim 15, elements 1-5, above. See claim 15, element 2, above See claim 15, element 3, above See claim 15, element 4, above See claim 15, element 5, above B. Ground 2: Obviousness in View of Ikuhara 29

Claims 8 and 13 of the 601 patent should be invalidated because those claims are obvious under 35 U.S.C. 103 in view of the disclosures Ikuhara (Ex. 1003) over the general knowledge of a person of skill in the art. Ikuhara, entitled Hybrid Vehicle, is a Japanese Unexamined Patent Application Publication (No. 2000-87785), which was published on March 28, 2000. Ikuhara qualifies as prior art to the 601 patent under 102(b) and 103. Ikuhara was not before the Examiner during prosecution of the 601 patent. Ikuhara teaches a hybrid vehicle control system that activates and deactivates the electric traction motor based on vehicle s load state. More specifically, Ikuhara teaches that a map is stored in memory containing an accelerator pedal threshold ( ASP1 ) that is indicative of a light load state. (Id. at 12, 20, 22; Ex. 1013, 75-76.) An accelerator pedal sensor generates signals representative of the current accelerator pedal position. (Ex. 1003, 18; Ex. 1013, 74.) That current position is compared to the ASP1. (Ex. 1003, 35, fig. 5; Ex. 1013, 80.) When the accelerator pedal position is less than ASP1 (indicating a light load), the vehicle is propelled by the electric traction motor only. (Ex. 1003, 35-36, fig. 5; Ex. 1013, 83-86.) When the accelerator pedal position is greater than ASP1 (indicating a medium or heavy load), the vehicle is propelled by the internal combustion engine only. (Id. at 23-24, 38, fig. 5; Ex. 1013, 83-86.) This control strategy is depicted in the following excerpt of figure 5: 30

As set forth in the claim charts, below, Ikuhara expressly discloses each element of claims 8 and 13 with one exception Ikuhara states that it selects between the electric traction motor and the internal combustion engine based on accelerator pedal position thresholds indicative of load, rather than on the basis of torque thresholds. Based on the general knowledge of a person of skill in the art in August 2002, however, it would have been obvious to use a threshold indicative of relatively low vehicle torque demand in place of Ikuhara s threshold indicative of a light load. As Dr. Irick notes in his declaration, the terms load and torque refer to the same thing: the amount of force applied (at a given radius) to rotate the engine shaft. 31

(Ex. 1013, 70-72, 87.) The terms are used interchangeably in the context of internal combustion engines. Indeed, persons of skill in the art often refer to an engine load factor or a percent load, both of which refer to the percentage of the maximum available torque that is being used. (Id., 70.) Moreover, a light load or a low load is equivalent to a relatively low torque demand. (Id., 70-72, 87.) As such, it would have been obvious to a person of skill in the art that Ikuhara s disclosures of load thresholds could also be expressed as torque thresholds. (Id., 70-72, 87.) Claim 8 Ikuhara (Ex. 1003) [1] A control system for controlling propulsion equipment in a hybrid vehicle including a traction motor and an internal combustion engine, the control system comprising: Para. 1: The present invention relates to a hybrid electric vehicle which is equipped with an internal combustion engine and an electric motor and switches the operating states of the internal combustion engine and the electric motor in accordance with the required load. [2] a sensor coupled to sense a signal indicative of vehicle torque demand; Abstract: The present invention is equipped with a required load detection means 6 capable of detecting the load required by the internal combustion engine 2 or the electric motor 3. Para. 18: In addition, the switching of the driving modes of such an engine 2 is realized based on a control signal from the ECU 5. That is, as illustrated in FIG. 1, the accelerator position sensor (required load detection means) 6, the vehicle speed sensor 7, the revolution speed sensor 8, the gear ratio 32

Claim 8 Ikuhara (Ex. 1003) [3] memory for storing a threshold torque range indicative of conditions of relatively low vehicle torque demand; detection sensor 9, and the like are connected to the ECU 5, and in the ECU 5, the running mode of the vehicle 1 or the running modes of the engine 2 and the motor 3 are set based on detection information from each of the sensors 6 to 9. Para. 19: Here, in the ECU 5, the net average effective pressure Pe of the engine 2 is calculated from accelerator position information (accelerator degree of opening information) APS serving as the required load detected by the accelerator position sensor 6 and engine revolution speed information Ne detected by the engine revolution speed sensor 6 [sic: 8]. Para. 12: FIG. 2 illustrates an example of a map for setting the running mode. Para. 20: Next, the setting of a specific running mode in the ECU 5 will be described. Inside the ECU 5, a map such as that illustrated in FIG. 2 is respectively stored in accordance with the transmission gear ratio. The ECU 5 selects a map corresponding to the gear ratio based on information TMn from the gear ratio detection sensor 9 and sets the running mode from the load information APS from the accelerator position sensor 6 and vehicle speed information Vs from the vehicle speed sensor 7 using this selected map. Fig. 2: 33

Claim 8 Ikuhara (Ex. 1003) [4] a processor configured to process the signal indicative of vehicle torque demand to determine whether the vehicle torque demand is within the threshold torque range; Para. 22: A specific example of the setting of the running mode will be described hereinafter. As illustrated in FIG. 2, when the accelerator position detected by the accelerator position sensor 6 is equal to or less than a first prescribed value APS1 (or APS1') (light load range), it is assessed that the load required by the engine 2 is low (or that the engine 2 is being used in the light load state with a low load), and the mode is set to the first running mode for running the vehicle with the driving force of the motor 3. Para. 18: In addition, the switching of the driving modes of such an engine 2 is realized based on a control signal from the ECU 5. That is, as illustrated in FIG. 1, the accelerator position sensor (required load detection means) 6, the vehicle speed sensor 7, the revolution speed sensor 8, the gear ratio detection sensor 9, and the like are connected to the ECU 5, and in the ECU 5, the running mode of the vehicle 1 or the running modes of the engine 2 and the motor 3 are set based on detection information from each of the sensors 6 to 9. Fig. 1 (at element 5): 34