in the united states patent and trademark...

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Patent of: MacBain Attorney Docket No.: 15625-0018IP1

U.S. Patent No.: 6,775,601

Issue Date: August 10, 2004

Appl. Serial No.: 10/214,048

Filing Date: August 6, 2002

Title: METHOD AND CONTROL SYSTEM FOR CONTROLLING PROPULSION IN A HYBRID VEHICLE

Mail Stop Patent Board Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO. 6,775,601 PURSUANT TO 35 U.S.C. §§ 311-319, 37 C.F.R. § 42

Attorney Docket No 15625-0018IP1 IPR of U.S. Patent No. 6,775,601

i

TABLE OF CONTENTS

I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ....................... 1

A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 1

B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 1

C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ...................... 2

II. PAYMENT OF FEES UNDER 37 C.F.R. § 103 ......................................... 3

III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ....................... 3

A. Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 3

B. Challenge Under 37 C.F.R. § 42.304(b) and Relief ................................. 3

1. Prior Art References Used in the Proposed Grounds of Rejection . 4

IV. CLAIM CONSTRUCTION .......................................................................... 5

V. AT LEAST ONE CLAIM OF THE ’601 PATENT IS UNPATENTABLE ................................................................................................... 6

A. GROUND 1 – Claims 1-4, 6-11, and 13-17 are unpatentable over Kitada under 35 U.S.C. § 102 ..................................................................................... 6

B. GROUND 2 – Claims 1-17 are unpatentable over Mikami under 35 U.S.C. § 102 ................................................................................................... 20

C. GROUND 3 – Claims 1-17 are unpatentable over Mikami in view of Kitada under 35 U.S.C. § 103 ........................................................................ 35

D. GROUND 4 – Claims 1, 4, 6, 8, 11, 13, 15, 16, and 17 are unpatentable over Fujieda under 35 U.S.C. § 102 .............................................................. 38

E. GROUND 5 – Claims 1-4, 6-11 and 13-17 are unpatentable over Otsu under 35 U.S.C. § 102 ................................................................................... 48

VI. CONCLUSION ............................................................................................ 59


ii

EXHIBITS

HN-1001 U.S. Patent No. 6,775,601 to MacBain (“the ’601 Patent”)

HN-1002 Excerpts from the Prosecution History of the ’601 Patent (“the Prosecution History”)

HN-1003 Declaration of Thomas A. Keim, Ph.D. regarding the ’601 Patent

HN-1004 Japanese Unexamined Patent Publication No. S59-204402 (“Kitada”), English Translation, Declaration of Translator

HN-1005 U.S. Patent No. 5,839,533 (“Mikami”)

HN-1006 Japanese Unexamined Patent Application Publication H09-224304 (“Fujieda”), English Translation, Declaration of Translator

HN-1007 U.S. Patent No. 6,123,163 (“Otsu”)

HN-1008 U.S. Patent No. 6,123,163 (“Otsu”)


1

American Honda Motor Co., Inc. (“Petitioner” or “Honda”) petitions for

Inter Partes Review (“IPR”) under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42 of

claims 1-17 (“the Challenged Claims”) of U.S. Patent No. 6,775,601 (“the ’601

Patent”). Honda respectfully submits that an IPR proceeding should be instituted

and that the Challenged Claims should be canceled as unpatentable.

I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)

A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)

Petitioner, American Honda Motor Co., Inc., is a real party-in-interest. Real

parties-in-interest also include Honda of America Mfg., Inc., Honda Patents &

Technologies North America, LLC, and Honda Motor Co., Ltd.

B. Related Matters Under 37 C.F.R. § 42.8(b)(2)

The following judicial or administrative matters may affect or be affected by

a decision in this proceeding: Signal IP, Inc. v. Fiat U.S.A., Inc. et al., Case No. 2-

14-cv-13864 (E.D. Mich); Signal IP, Inc. v. Ford Motor Company, Case No. 2-14-

cv-13729 (E.D. Mich); Signal IP, Inc. v. Porsche Cars North America, Inc., Case

No. 2-14-cv-03114 (C.D. Ca); Signal IP, Inc. v. Ford Motor Company, Case No. 2-

14-cv-03106 (C.D. Ca); Signal IP, Inc. v. Fiat USA, Inc. et al., Case No. 2-14-cv-

03105 (C.D. Ca); Signal IP, Inc. v. Volkswagen Group of America, Inc. d/b/a Audi

of America, Inc. et al., Case No. 2-14-cv-03113 (C.D. Ca); Signal IP, Inc. v.

Jaguar Land Rover North America, LLC, Case No. 2-14-cv-03108 (C.D. Ca);

Signal IP, Inc. v. Volvo Cars of North America, LLC, Case No. 2-14-cv-03107


2

(C.D. Ca); Signal IP, Inc. v. BMW of North America, LLC et al., Case No. 2-14-cv-

03111 (C.D. Ca); Signal IP, Inc. v. Mercedes-Benz USA, LLC et al., Case No. 2-

14-cv-03109 (C.D. Ca); Signal IP, Inc. v. Nissan North America, Inc., Case No. 2-

14-cv-02962 (C.D. Ca); Signal IP, Inc. v. Subaru of America, Inc., Case No. 2-14-

cv-02963 (C.D. Ca); Signal IP, Inc. v. Suzuki Motor of America, Inc., Case No. 8-

14-cv-00607 (C.D. Ca); Signal IP, Inc. v. Kia Motors America, Inc., Case No. 2-

14-cv-02457 (C.D. Ca); Signal IP, Inc. v. American Honda Motor Co., Inc. et al.,

Case No. 2-14-cv-02454 (C.D. Ca); Signal IP, Inc. v. Mazda Motor of America,

Inc., Case No. 8-14-cv-00491 (C.D. Ca); Signal IP, Inc. v. Mazda Motor of

America, Inc., Case No. 2-14-cv-02459 (C.D. Ca); Signal IP, Inc. v. Mitsubishi

Motors North America, Inc., Case No. 8-14-cv-00497 (C.D. Ca); Signal IP, Inc. v.

Mitsubishi Motors North America, Inc., Case No. 2-14-cv-02462 (C.D. Ca); and

Takata Seat Belts In v. Delphi Automotive Sys, et al., Case No. 5-04-cv-00464

(C.D. Ca). The ’601 Patent is also the subject of three pending requests for Inter

Partes Review: IPR2015-00860 (filed March 13, 2015), IPR2015-00861 (filed

March 13, 2015), and IPR2015-00941 (filed March 25, 2015). The ‘601 Patent is

also the subject of a pending ex parte Re-Examination, Serial No. 90/013,385 (filed

October 27, 2015).

C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)

Honda designates Joshua A. Griswold, Reg. No. 46,310, as Lead Counsel


3

and Daniel Smith, Reg. No. 71,278 as Backup Counsel. Mr. Griswold and Mr.

Smith are available for service at 3200 RBC Plaza, 60 South Sixth Street,

Minneapolis, MN 55402 (T: 214-292-4034). All are available for electronic service

by email at [email protected].

II. PAYMENT OF FEES UNDER 37 C.F.R. § 103

Honda authorizes charges to Deposit Account No. 06-1050 for the fee set in

37 C.F.R. § 42.15(a) for this Petition and for any related additional fees.

III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104

A. Grounds for Standing Under 37 C.F.R. § 42.104(a)

Honda certifies that the ’601 Patent is available for IPR. The present petition

is being filed within one year of the April 4, 2014 service of the complaint against

Honda in the Central District of California action. Honda is not barred or estopped

from requesting this review challenging the Challenged Claims on the below-

identified grounds.

B. Challenge Under 37 C.F.R. § 42.304(b) and Relief

Honda requests an IPR of the Challenged Claims on the grounds set forth in

the list below and requests that each of the Challenged Claims be found

unpatentable in light of the cited references and the attached declaration.

Ground Basis for Rejection

1 Claims 1-4, 6-11, and 13-17 are unpatentable over Kitada under 35 U.S.C. § 102.

2 Claims 1-17 are unpatentable over Mikami under 35 U.S.C. § 102.

3 Claims 1-17 are unpatentable over Mikami in view of Kitada under


4

Ground Basis for Rejection

35 U.S.C. § 103.

4 Claims 1, 4, 6, 8, 11, 13, 15, 16, and 17 are unpatentable over Fujieda under 35 U.S.C. § 102

5 Claims 1-4, 6-11, and 13-17 are unpatentable over Otsu under 35 U.S.C. § 102

1. Prior Art References Used in the Proposed Grounds of

Rejection

The proposed Grounds rely solely on prior art references that were publicly

available more than one year before the earliest possible priority date of the ’601

Patent, and thus qualify as prior art under 35 U.S.C. § 102(b).

The ’601 Patent issued on August 10, 2004 from application number

10/214,048, which was filed August 6, 2002. The ’601 Patent does not claim

priority to any earlier applications. Accordingly, August 6, 2002 represents the

earliest possible priority date for the ’601 Patent.

Kitada (Ex. 1004) was published on November 19, 1984, more than one

year before the earliest effective filing date of the Challenged Claims, and thus is

prior art at least under 35 U.S.C. § 102(b). Mikami (Ex. 1005) issued on

November 24, 1998, more than one year before the earliest effective filing date of

the Challenged Claims, and thus is prior art at least under 35 U.S.C. § 102(b).

Fujieda (Ex. 1006) was published August 26, 1997, more than one year before the

earliest effective filing date of the Challenged Claims, and thus is prior art at least

under 35 U.S.C. § 102(b). Otsu (Ex. 1007) issued on September 26, 2000, more


5

than one year before the earliest effective filing date of the Challenged Claims, and

thus is prior art at least under 35 U.S.C. § 102(b).

IV. CLAIM CONSTRUCTION

In accordance with 37 C.F.R. § 42.100(b), claims in an unexpired patent are

given their broadest reasonable construction in light of the specification of the

patent in which it appears. Unless noted otherwise in the discussions below, all

terms should simply be given their broadest reasonable construction in light of the

specification as commonly understood by those of ordinary skill in the art.

Petitioner expressly reserves the right to advance different constructions in the

matter now pending in district court, as the applicable claim construction standard

for that proceeding (“ordinary and customary meaning”) is different. Further, due

to the different claim construction standards in the proceedings, Petitioner

identifying any feature in the cited references as teaching a claim term of the ’601

Patent is not an admission by Petitioner that claim term is met by any feature for

infringement purposes. Petitioner also maintains that several terms in the claims of

’601 Patent are indefinite, but since issues under 35 U.S.C. § 112 may not be raised

in Inter Partes Review proceedings, Petitioner has attempted to interpret all claim

terms. Petitioner expressly reserves the right to raise the issue of indefiniteness

should the issue arise in this or other proceedings.


6

V. AT LEAST ONE CLAIM OF THE ’601 PATENT IS UNPATENTABLE

The sections below specifically explain how the Challenged Claims are

unpatentable pursuant to the proposed Grounds of rejection listed in Section III(B),

supra. Accordingly, for at least the reasons discussed below, Petitioner asserts that

the Challenged Claims of the ’601 Patent are unpatentable and requests

cancellation of all Challenged Claims.

A. GROUND 1 – Claims 1-4, 6-11, and 13-17 are unpatentable over Kitada under 35 U.S.C. § 102

Claim 8 - [8.0]: “A control system for controlling propulsion equipment in a hybrid vehicle including a traction motor and an internal combustion engine”

Kitada describes a control system for controlling “an engine/electric hybrid

automobile with maximized operation efficiency.” Ex. 1004, col. 2. Ex. 1003, ¶

26. Kitada applies its techniques to vehicles including “an engine and a motor

energized by a battery,” and describes controlling “the operation of the engine and

the motor . . . to improve the fuel efficiency of the engine.” Id. at cols. 2-3. Kitada

states that “the required torque” of the vehicle is determined “on the basis of the

amount of accelerator pedal depression.” Id.

Kitada further describes “control[ling] operation of the . . . engine and motor

on the basis of the required torque[.]” Id. (emphasis added). Kitada states that a

“central control unit” in the vehicle determines a “next required operating state on

the basis of various data” including “the amount of acceleration depression . . . the

amount of brake depression . . . the output shaft rotation speed” and “the residual


7

battery capacity” of the vehicle. Id. at col. 13 (emphasis added). The next required

operating state is determined “from four operation modes, i.e., a motor mode, a

power generation mode, a regeneration mode and an engine mode,” and “an

operation control suited to that mode” is performed. Id. at cols. 12-14 (emphasis

added). FIG. 7 from Kitada illustrates this mode selection process. Accordingly,

the controller for a drive system including an engine and an electric motor, as

taught by Kitada, discloses “[a] control system for controlling propulsion

equipment in a hybrid vehicle including a traction motor and an internal

combustion engine” as recited in the claim.

[8.1]: “a sensor coupled to sense a signal indicative of vehicle torque demand”

“Torque demand” in the ‘601 Patent is described as a characteristic

indicative of the torque demanded by the driver, such as by depressing the

accelerator pedal. Ex. 1001, 4:47-55; Ex. 1003, ¶ 27-30. For example, the ‘601

Patent describes that torque demand can be determined from a sensor “coupled to

the accelerator pedal to detect whether the accelerator pedal is full depressed.” Ex.

1001, 4:47-55. Kitada describes an “accelerator depression amount detection

device,” i.e., a sensor that supplies a “central control unit with a voltage signal

proportional to the amount of the accelerator pedal depression by means of, for

example, a potentiometer mounted at the accelerator pedal[.]” Ex. 1004, col. 10

(emphasis added). Kitada further describes that that “the required torque” of the


8

vehicle is determined “on the basis of the amount of accelerator pedal depression.”

Id. at col. 3. Accordingly, the accelerator depression amount detection device, as

taught by Kitada, discloses “a sensor coupled to sense a signal indicative of vehicle

torque demand” as recited in the claim.

[8.2]: “memory for storing a threshold torque range indicative of conditions of relatively low vehicle torque demand”

Kitada describes that a decision whether to drive the vehicle with the motor

or engine (e.g., in “motor mode” or “engine mode”) is made “on the basis of the . .

. calculated required torque and required rotation speed” of the vehicle drive shaft.

Ex. 1004, col. 18. This decision is made according to a “data table for calculating

each mode region determined by the interrelation of the required torque and the

required rotation speed[.]” Id. Kitada characterizes this table as a “preset stored

data table,” i.e., the table is stored in a memory. Id. col 17; Ex. 1003, ¶ 31. A graph

representation of this data table, plotting required torque on the Y-axis and

rotational speed on the X-axis, is shown in Fig. 8:


9

Ex. 1004, detail of FIG. 8 (annotated)

The ‘601 patent does not expressly define what “relatively low vehicle

torque demand,” is relatively lower than. As shown in FIG. 8, Kitada teaches a

motor mode range of required torque values corresponding to “required torque”

values for different rotation speeds that are relatively lower than other required

torque values, and, indeed, quite low (less than half the Y-axis height). See id. at

FIG. 8; Ex. 1003, ¶ 32. When the required torque and rotation speed are within this

range, the vehicle is operated in motor mode such that the vehicle is driven only by

the electric motor. Ex. 1004, col. 18; Ex. 1003, ¶ 32.

Accordingly, a memory providing a preset stored data table indicating a

threshold torque value for a given rotational speed, as taught by Kitada, discloses

“memory for storing a threshold torque range indicative of conditions of relatively

low vehicle torque demand” as recited in the claim.

[8.3]: “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”

Kitada describes that that “central control unit,” i.e., a processor, determines

“the next required operating state” of the vehicle “on the basis of . . . the amount of

acceleration depression from the aforementioned accelerator depression amount

detection device[.]” Ex. 1004, col. 13 (emphasis added). In particular, Kitada

describes “determin[ing] whether or not the next required operation state is the


10

motor mode on the basis of the abovementioned calculated required torque and

required rotation speed” by consulting “the data table for calculating each mode

region,” which defines the torque threshold range as described at [1.3], supra. Id.

at col. 18 (emphasis added). As shown in FIG. 8, annotated above, if the required

torque is within the motor mode range, the vehicle is determined to be in motor

mode. Ex. 1003, ¶ 33.

Accordingly, Kitada’s central control unit determining whether the current

required torque for the vehicle is below a torque threshold value and therefore

within a motor mode torque range, discloses “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” as recited in the claim.

[8.4]: “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”

Kitada teaches that if the required torque is within the motor mode torque

range, the vehicle is placed in motor mode and “a command signal for operating

the MG (2) [motor/generator] as a motor is supplied to the MG control unit (13),

and the torque and the rotation speed command value data are supplied to the MG

control device (13) so that the abovementioned required torque and required

rotation speed can be obtained by driving the MG (2).” Ex. 1004, col. 18


11

(emphasis added); Ex. 1003, ¶ 34. Kitada also teaches that “[a] stop command

signal is thereby outputted from the central control unit (7) to the ignition device

(14) and the fuel supply device (15) as to stop the engine[.]” Ex. 1004, col. 18; Ex.

1003, ¶ 34. When the engine is stopped, it is de-engaged from propelling the

vehicle, because it is providing no torque to turn the vehicle’s wheels in such a

state. Ex. 1003, ¶ 34. FIG. 7 illustrated the process of determining that the vehicle

is in motor mode based on the require torque. See Ex. 1004, FIG. 7.

Accordingly, engaging the motor to drive the vehicle while stopping the

engine during periods of low required torque, as taught by Kitada, discloses

“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” as recited in

the claim.

[8.5]: “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.”

Kitada teaches that the vehicle can be placed in other operation modes if the

required torque is outside the motor mode range. Ex. 1004, col. 20, FIG. 7; Ex.

1003, ¶ 35. For example, one operation mode is an “engine mode” in which “the


12

required torque is outputted by driving the engine[.]” Id. at col. 16 (emphasis

added). FIG. 7, annotated above, shows that the vehicle enters engine mode during

periods where the required torque are not within the motor mode range. Ex. 1003, ¶

35-36.

When the vehicle enters engine mode, “[a] command signal for stopping

operation of the MG (2) [motor generator] is thereby supplied from the central

control unit (7) to the MG control unit (13)[.]” Id. at 20 (emphasis added). Further,

“if the engine is in a stopped state, the [starter] (3) is driven, the engine (1) is

started, and a drive signal is supplied to the ignition device (14) and the fuel supply

device (15).” Id.

Kitada also describes a power generation mode that the vehicle can enter

when the required torque is outside the motor mode range. See id. at FIG. 7, col.

19; Ex. 1003, ¶ 37. “Operation in the power generation mode region is carried out

with the engine,” and a “bypass valve is appropriately opened to increase the

output torque of the engine by a prescribed value[.]” Id. at col 15 (emphasis

added); Ex. 1003, ¶ 37. This extra output torque is used to drive the motor, which

placed into a generator mode to charge the vehicle’s battery. Id. at col 15; Ex.

1003, ¶ 37. When entering power generation mode, “[a] command signal for

operating the MG (2) as a generator is thereby supplied from the central control

unit (7) to the MG control unit (13), and if the engine (1) is stopped at this point, a


13

[starter] (3) drive signal is generated to start the engine and a drive signal is

supplied to the ignition device (14) and the fuel supply device[.]” Ex. 1004, col.

19 (emphasis added).

Accordingly, stopping the electric motor and starting the engine to drive the

vehicle when the required torque is outside the motor mode range, as taught by

Kitada, discloses “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”

as recited in the claim.

Claim 9 - [9.0]: “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 of the vehicle”

Kitada describes a “battery capacity detection device 12” that monitors for

“battery capacity (CB).” Ex. 1004, col. 12, 15. Battery capacity is an operational

condition of the propulsion system. Ex. 1003, ¶ 40. Kitada also describes that the

“the rotation speed of the output shaft that outputs the travel torque is detected by a

rotation speed detection means.” Ex. 1004, col. 6. The rotation speed of the output

shaft is an operational condition of the propulsion system. Ex. 1003, ¶ 38.

Accordingly, in its battery capacity monitor or speed monitor, Kitada

discloses “a monitor configured to monitor at least one operational parameter


14

indicative of environmental and/or operational conditions of the propulsion system

of the vehicle” as recited in the claim.

[9.1]: “wherein the value of the selected threshold torque range is adjusted based on the value of the at least one operational parameter.”

As described above, Kitada describes a motor mode range of torque values,

thereby disclosing the threshold torque range. See Ground 1, [8.1], supra. Kitada

describes that in the “motor mode region, the motor mode has precedence.” Ex.

1004, col 15, FIG. 7. However, If the “battery capacity (CB) is less than a

“reference value (CB1)” Kitada prevents entry into the motor mode and “a

determination is made whether or not the required operation state is the power

generation mode.” Id. col 18, FIG. 7. The operation state enters power generation

mode if “the battery capacity (CB) is at or lower than a prescribed reference value

(CB3).” Id. col. 15, FIG. 7. “Operation in the power generation mode region is

carried out with the engine.” Id. Thus, the range of values of the threshold torque

range applied to determine that motor mode is appropriate effectively becomes

zero, i.e., regardless of the required torque, Kitada’s system will not enter motor

mode. Ex. 1003, ¶ 40. In the context of Kitada’s speed sensor, FIG. 8 shows that

the upper range of its motor mode range of torque values varies with rotational

speed. Ex. 1004, FIG. 8. Ex. 1003, ¶ 39. Accordingly, Kitada discloses “the value

of the selected threshold torque range is adjusted based on the value of the at least

one operational parameter” as recited in the claim.


15

Claim 10 - [10.0]: “The control system 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 Ground 1, [9.0]-[9.1], supra (“battery capacity (CB)”)

Claim 11 - [11.0]: “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.”

See Ground 1, [9.0]-[9.1], supra (“battery capacity (CB)”)

Claim 13 - [13.0]: “The control system of claim 8 wherein the hybrid comprises a parallel-hybrid.”

The ’601 Patent defines the term “parallel-hybrid” as follows: “As used

herein, a parallel-hybrid generally comprises a vehicular propulsion system in

which tractive power may be selected from either of at least two distinct power

sources, typically, an ICE and an electric motor.” Ex. 1001, 4:9-14 (emphasis

added). As previously described, the drive system of Kitada tractive power for the

vehicle is provided by an internal engine and an electric motor. See Ground 1,

[8.0], supra. The engine is an internal combustion engine, i.e., ICE. Ex. 1004 12-

13; Ex. 1003, ¶ 41. Accordingly, Kitada discloses “the hybrid comprises a parallel-

hybrid” as recited in the claim.

Claim 14 - [14.0]: “The control system of claim 13 wherein the parallel-hybrid is selected from the group comprising a mild-parallel-hybrid and a robust-parallel-hybrid.”

The ’601 Patent defines the terms “mild-parallel-hybrid” as follows: “A

mild-parallel-hybrid generally comprises a vehicular propulsion system where the


16

amount of tractive power from the electric traction motor may be relatively low in

comparison to the ICE.” Ex. 1001, 4:14-17 (emphasis added). Kitada describes a

hybrid drive system including “a relatively low-output motor,” and in FIG. 2,

shows the motor is engaged at lower torque and speeds, i.e., lower power, than in

some instances when the engine is engaged (e.g., compare M-2 to E). Ex. 1004,

col. 5, 14 and FIG. 2; Ex. 1003, ¶ 42. Kitada, thereby discloses that “the parallel-

hybrid is selected from the group comprising a mild-parallel-hybrid and a robust-

parallel-hybrid” as recited in the claim.

Claims 1-7 - Claims 1-7 recite “a method for controlling a propulsion system in a

hybrid vehicle” describing the functions of structure recited in claims 8-14 (e.g.,

sensors, processors, a memory, actuators). The following table identifies the

portions of the arguments presented for claims 8-14 that apply to claims 1-7.

Claim Corresponding Argument 1 See Ground 1, [8.0] – [8.5], supra 2 See Ground 1, [9.0] – [9.1], supra 3 See Ground 1, [10.0], supra 4 See Ground 1, [11.0], supra 6 See Ground 1, [13.0], supra 7 See Ground 1, [14.0], supra

Claim 15 - [15.0]: “A method for controlling a propulsion system in a hybrid vehicle including a traction motor and a propulsion unit”

See Ground 1, [8.0], supra

[15.1]: “mapping respective regions of relatively high and low efficiency in an efficiency map for the propulsion unit”


17

As previously discussed, Kitada describes a controlling the operation of a

drive system based on the currently required torque of the vehicle. See Ground 2,

[8.0]-[8.5], supra. Kitada also teaches that required torque values are directly

linked to the fuel efficiency of the drive system, stating that “the lower the output

torque, the lower the fuel efficiency rate[.]” Ex. 1004, col. 3 (emphasis added).

Kitada graphically depicts this in an efficiency map. Ex. 1004, FIG. 1 and 2. Ex.

1003, ¶ 43. To maximize efficiency, Kitada describes controlling the vehicle “to

travel with a motor drive outside the regions in which the aforementioned engine

has the best operation efficiency.” Id. at col. 4, FIG. 2. Kitada describes defining a

motor mode efficiency region (a “low efficiency region”) in which the drive

system “has a poor fuel efficiency rate when the engine is operated under the

conditions in this region, and the operating efficiency would be better with motor

operation.” Id. (emphasis added); Ex. 1003, ¶ 43. Kitada also describes defining

an engine mode efficiency region (a “high efficiency region”) representing “a mid-

high torque region in which the required torque is outputted by driving the engine,

and in which the engine can be efficiently operated.” Ex. 1004, col. 16, FIG. 2

(emphasis added); Ex. 1003, ¶ 43.

Accordingly, defining a motor mode efficiency region in which fuel

efficiency of the engine is low, and an engine mode efficiency region in which the

fuel efficiency of the engine is high, as taught by Kitada, discloses “mapping


18

respective regions of relatively high and low efficiency in an efficiency map for the

propulsion unit” as recited in the claim. Notably, the broadest reasonable

interpretation of the claim does not require a graphical representation of the

mapping.

[15.2]: “sensing a signal indicative of said regions of relatively high and low efficiency”

As described above, the required torque is indicative of the efficiency of the

drive system. See Ground 1, [15.1], supra. As also described above, the required

torque is determined based on a signal representing the amount of depression of the

accelerator pedal of the vehicle. See Ground 1, [8.1], supra. Therefore, the signal

representing the amount of depression of the accelerator pedal of the vehicle is a

signal indicative of the efficiency of the drive system. Ex. 1003, ¶ 44.

Accordingly, sensing the signal representing the amount of accelerator

depression, as taught by Kitada, discloses “sensing a signal indicative of said

regions of relatively high and low efficiency” as recited in the claim.

[15.3]: “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”

As previously discussed, Kitada teaches that the required torque value

corresponds directly to efficiency of the drive system. See Ground 1, [8.1], supra.

Thus, controlling operation of the drive system based on the required torque value

includes controlling operation based of the efficiency value corresponding to the


19

required torque value. Ex. 1003, ¶ 45. Accordingly, Kitada teaches this claim

limitation for the same reasons previously discussed relative to claim 8. See

Ground 1, [8.4], supra.

[15.4]: “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.”

As previously discussed, Kitada teaches that the required torque value


Thus, controlling operation of the drive system based on the required torque value


required torque value. Ex. 1003, ¶ 45. Accordingly, Kitada teaches this claim



Claim 16 - [16.0]: “The control system of claim 15 wherein the propulsion unit is selected from the group consisting of an internal combustion engine, and a fuel cell.”

See Ground 1, [8.0] and [13.0], supra.

Claim 17 - Claim 17 recites a “computer-readable medium including computer-

readable code” comprising “segment code” for performing each of the steps recited

in the method of claim 15. Accordingly, Petitioner submits that claim 17 is

unpatentable for at least the same reasons discussed above relative to claim 15. See

Ground 1, [15.0] – [15.4], supra.


20

B. GROUND 2 – Claims 1-17 are unpatentable over Mikami under 35 U.S.C. § 102

For at least the reasons described below, claims 1-17 are unpatentable over

Mikami under 35 U.S.C. § 103.


Mikami describes control system for “a hybrid drive vehicle” that includes

“an electric motor” and an engine “such as an internal combustion engine operated

by combustion of a fuel[.]” Ex. 1005, Abstract, 6:38-40. Mikami involves

controlling operation of the hybrid drive vehicle “according to an operation mode

determining sub-routine” to “select one of nine operation modes” for the vehicle.

8:55-61. As illustrated in FIG. 5 from Mikami, and as will be described in greater

detail below, the nine operating modes include a “MOTOR DRIVE” mode in

which the vehicle is powered only by the electric motor, and an “ENGINE

DRIVE” mode in which the vehicle is powered only by the engine. Ex. 1005,

9:16-17:24. The “traction motor” of the ‘601 Patent is described as an “electric

traction motor to propel the vehicle.” Ex. 1001, 4:64-5:2. As discussed more

below, Mikami’s electric motor 12 propels the vehicle, and is a thus traction motor.

Ex. 1003, ¶ 46. Accordingly, the control system for controlling operation of a

hybrid drive vehicle including an engine and an electric to select between

operating modes, as taught by Mikami, discloses a “control system for controlling

propulsion equipment in a hybrid vehicle including a traction motor and an internal


21



Mikami describes a sensor that senses a signal indicating “the operating

amount ΘAC of the accelerator pedal[.]” Id. at 14:22-24, 8:62-9:2. As in the ‘601

Patent, the operating amount ΘAC of the accelerator pedal is indicative of the

torque demand. Ex. 1003, ¶ 47. Accordingly, the sensor for sensing the operating

amount ΘAC of the accelerator pedal which is indicative of currently required

torque, as taught by Mikami, discloses “a sensor coupled to sense a signal

indicative of vehicle torque demand” as recited in the claim.


Mikami describes its controller includes “a microcomputer incorporating a

central processing unit (CPU), a random-access memory (RAM), and a read-only

memory (ROM)” and is “adapted to control the hybrid drive system 8 according to

a predetermined control program, more specifically, select one of nine operation

modes indicated in FIG. 5, according to an operational mode determining sub-

routine illustrated in the flow chart of FIG. 4.” Ex. 1005, 8:53-61. The selection of

operation modes is made, in part, based on a comparison of a “currently required

output Pd” to a number of thresholds. Ex. 1005, 14:15-17:24, FIGS. 4 and 5.

The “currently required output Pd of the hybrid drive system 8 is an output

of the hybrid drive system 8 required to drive the vehicle against a running


22

resistance.” Id. at 14:17-22. Pd “is calculated according to a predetermined data

map or equation, on the basis of the operating amount ΘAC of the accelerator

pedal, a rate of change of this value ΘAC, or the currently established operating

position of the automatic transmission 26.” Id. at 14:22-24. As the operating

amount ΘAC of the accelerator pedal is indicative of torque demand, Pd is as well.

See Ground 2, [8.1]; Ex. 1003, ¶ 49. This consistent with Pd being “an output”

required to “drive the vehicle against a running resistance,” i.e. a load and the use

of Pd in determining whether the vehicle is in a “low-load,” “medium-load or high-

load running state.” Ex. 1005, 14:15-36; Ex. 1003, ¶ 49. While it is easy to assume,

based on its moniker “Pd,” that the currently required output Pd corresponds to a

measure of required power, this is not so. Ex. 1003, ¶ 50. Mikami does not indicate

that Pd is calculated based on speed, as would be required if Pd were in terms of

power (speed is required because power is the product of torque and speed). Ex.

1008, p. 552. Ex. 1003, ¶ 50. Also, that some torque variables are labeled as “T”

does not preclude Pd from also representing a torque value. Ex. 1003, ¶ 50.

Because it is based on the accelerator pedal angle, Pd, for example, could stand for

“pedal displacement.” Finally, even if Pd were in terms of power it would be

indicative of torque because power and torque are mathematically related. Ex.

1008, p. 552.

In operation S9 of Mikami’s FIG. 5, the currently required output Pd is


23

compared against a “predetermined first threshold P1,” which is “a boundary

value” for the currently required output Pd. Ex. 1005, 14:27-31. Mikami states that

the hybrid drive system is in “a low-load running state if the currently required

output Pd is equal to or smaller than the first threshold value P1.” Id. (emphasis

added). Because the currently required output Pd is indicative of torque demand,

the output threshold P1 is also indicative of torque demand. Ex. 1003, ¶ 51.

Further, the output threshold P1 defines the upper limit of the “low-load running

state” of the vehicle, and thus the range between P1 and smaller torque values

define a threshold torque range indicative of conditions of relatively low torque

demand. Ex. 1003, ¶ 51. Accordingly, the memory of Mikami’s controller storing

the torque range between the output threshold P1 and lower values of torque of the

hybrid drive system teaches “memory for storing a threshold torque range

indicative of conditions of relatively low vehicle torque demand” as recited in the

claim.


As mentioned above Mikami describes that its controller includes “a

microcomputer incorporating a central processing unit (CPU), a random-access

memory (RAM), and a read-only memory (ROM)” and is “adapted to control the

hybrid drive system 8 according to a predetermined control program, more


24

specifically, select one of nine operation modes indicated in FIG. 5, according to

an operational mode determining sub-routine illustrated in the flow chart of FIG.

4.” Ex. 1005, 8:53-61. Mikami describes “the controller 64 receives various signals

from various detectors” including the “operating amount ΘAC of the accelerator

pedal,” which is a signal indicative of vehicle torque demand as discussed at

Ground 2, [8.2], supra. Id. at 8:54-9:2. The controller calculates the “currently

required output Pd...on the basis of the operating amount ΘAC of the accelerator

pedal” Id. at 14:22-24. The controller then determines whether the “currently

required output Pd of the hybrid drive system 8 is equal to or smaller than a

predetermined first threshold P1,” which is the upper limit of the torque threshold

range as discussed at Ground 2 [8.2], supra. Id. at 14:17-19. Ex. 1003, ¶ 52.

Accordingly, the processor of Mikami’s controller processing the signal indicating

the operating amount of the accelerator to determine the currently required output,

and determining whether the currently required output is less than the output

threshold, as taught by Mikami, discloses “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” as recited in the claim.



25

Mikami describes an “operating mode 1” indicating “to drive the vehicle

with only the motor/generator 12 as the drive power source.” Ex. 1005, 16:39-44

(emphasis added). When the vehicle is in operating mode 1 “the engine 10 is

disconnected from the planetary gear device 14, so that the energy loss due to the

drag resistance of the engine 10 is prevented[.]” Id. at 14:63-66 (emphasis added);

Ex. 1003, ¶ 53.

Mikami further describes that “the operation mode 1 is selected...if the

vehicle is in the low-load running state with the currently required output Pd being

equal to or smaller than the first threshold P1.” Id. at 16:39-44. As previously

discussed at Ground 2 [8.2] and [8.3], supra, the currently required output Pd being

equal to or smaller than the output threshold P1 indicates that the current torque

demand is within the threshold torque range. FIG. 4 from Mikami shows the

process of selecting operating mode 1 to drive the vehicle only with the electric

motor if the currently required output Pd is within the threshold torque range. See

id. at FIG. 4; Ex. 1003, ¶ 54.

Accordingly, driving the vehicle with only the electric motor and

disconnecting the engine from the drive system when the currently required output

is less than the output threshold, as taught by Mikami, discloses “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


26

traction motor to drivingly propel the vehicle while de-engaging the internal

combustion engine from propelling the vehicle” as recited in the claim.


Mikami describes an “operating mode 2” indicating “to drive the vehicle

with only the engine 10 as the drive power source.” Ex. 1005, 16:44-49. (emphasis

added). When the vehicle is in operating mode 2 a “first clutch 16” is engaged to

connect the engine 10 to the planetary gear device, allowing it to propel the

vehicle. Id. at 16:7-11. Further, when the vehicle is in operating mode 2, “the

motor/generator 12 is placed in the NON-LOAD state...whereby the vehicle is

driven with only the engine 10 used as the drive power source.” Id. at 16:11-13

(emphasis added).

Mikami further describes that “the operation mode 2 is selected in step S15

to drive the vehicle with only the engine 10 as the drive power source if the vehicle

is in the medium-load running state with the currently required output Pd being

larger than the first threshold P1.” Id. at 16:44-48.

FIG. 4 from Mikami shows the process of selecting operating mode 2 to

drive the vehicle only with the engine if the currently required output Pd is above

the threshold torque range. See id. at FIG. 4. Ex. 1003, ¶ 55. Accordingly, driving


27

the vehicle with only the engine and placing the electric motor in a no load state

when the currently required output is greater than the output threshold, as taught by

Mikami, discloses “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”



Mikami describes that:

The controller 64 receives various signals from various

detectors, such as signals indicative of: torque TE and speed NE of the

engine 10; torque TM and speed NM of the motor/generator 12; input

shaft speed Ni of the automatic transmission 26; output shaft speed

No of the automatic transmission 26 . . . operating amount SAC of the

accelerator pedal; amount SOC of electric energy stored in the electric

energy storage device 76; operating state of a brake system (operating

state of a brake pedal); currently selected position SH of the shift lever

80; and operator’s desired degree of drive source brake application as

obtained from the output signals of the UP-DOWN switch 88.”

Ex. 1005, 8:61 – 9:7 (emphasis added). Accordingly, the controller monitoring

these various signals, as taught by Mikami, discloses “a monitor configured to


28

monitor at least one operational parameter indicative of environmental and/or

operational conditions of the propulsion system of the vehicle” as recited in the

claim. Ex. 1003, ¶ 56.


As described above, Mikami teaches that its controller receives operational

parameters including “amount SOC of electric energy stored in the electric energy

storage device 76” Ex. 1005, 8:53-9:7. As shown in FIG. 4, the value of the

threshold torque range is different based on the value of the SOC variable. For

example, the threshold torque range to achieve “Mode 1” (step S11 on FIG. 4) is

“Pd ≤ P1,” (step S9) if “SOC ≥ A1” (step S10). Id., 14:15-56, FIG 4. Yet, if the

condition of “SOC ≥ A1” (step S10) is not met, the threshold torque range is

effectively zero, because “Mode 1” cannot be achieved no matter how low Pd may

be. Id.; Ex. 1003, ¶ 57.

Accordingly, Mikami teaches that the selected threshold torque range varies

based on amount SOC of electric energy stored in the electric energy storage

device, thereby disclosing “the value of the selected threshold torque range is

adjusted based on the value of the at least one operational parameter” as recited in

the claim.



29

See Ground 2, [9.0]-[9.1], supra (The operational parameters include an

“amount SOC of electric energy stored in the electric energy storage device 76”).


Mikami describes that “[i]f the currently required output Pd is equal to or

smaller than the first threshold value Pd, the control flow goes to step S10 to

determine whether the stored electric energy amount SOC is equal to or smaller

than a predetermined lower limit A1.” Ex. 1005, 14:41-47 (emphasis added). If the

stored electric energy amount SOC is less than the lower limit, “the control flow

goes to step S11 to select an operation mode 1,” Id. If the stored electric energy

amount SOC is more than the lower limit, “the control flow goes to step S12 to

select an operation mode 3.” Id. Mode 1 is a “motor drive” mode and Mode 3 is an

“engine drive + charging” mode. Id., FIG. 5. Thus, the motor is not activated to

propel the vehicle. Ex. 1003, ¶ 58. Accordingly, Mikami’s using the stored electric

energy amount to select between motor driving and engine driving modes discloses

“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.”

Claim 12 - [12.0]: “The control system of claim 8 further including memory for collecting historical data indicative of previous propulsion system performance of a given vehicle, and wherein the value of the threshold torque


30

range is selected based on said historical data.”

As previous discussed, Mikami teaches a memory with a stored torque

threshold range between a first threshold value P1 and a lowest available torque

value for the vehicle. See Ground 2, [8.2], supra. Mikami further describes that

“the first threshold value P1 is determined by experiments, so as to minimize the

exhaust gas emissions and the fuel consumption, depending upon the energy

efficiency during running of the vehicle[.]” Ex. 1005, 14:36-41 (emphasis added).

Accordingly, Mikami discloses “memory for collecting historical data indicative of

previous propulsion system performance of a given vehicle, and wherein the value

of the threshold torque range is selected based on said historical data.” as recited in

the claim. Ex. 1003, ¶ 59.


As previously described, the drive system of Mikami includes an internal

combustion engine and an electric motor. See Ground 2, [8.0], supra. Accordingly,

Mikami discloses “the hybrid comprises a parallel-hybrid” as recited in the claim,

because it discloses a vehicular propulsion system in which tractive power may be

selected from either of at least two distinct power sources, typically, an ICE and an

electric motor. Ex. 1003, ¶ 60.


Mikami describes that “[t]he motor/generator 12 used in the present hybrid


31

drive system 8 has a torque capacity which is about ρ times the maximum torque of

the engine 10,” where ρ is the gear ratio of the planetary gear (commonly “about

0.5”) Ex. 1005, 5:56-59, 5:38-39 (emphasis added). Mikami continues: “the torque

capacity and size of the motor/generator 12 are minimized to minimize the size and

cost of manufacture of the hybrid drive system 8, while assuring the required

torque.” Id. at 5:59-61 (emphasis added). The motor/generator has a torque output

that is relatively low relative to the engine. Ex. 1003, ¶ 60. Accordingly, Mikami

discloses “a mild-parallel-hybrid” as recited in the claim, because it discloses a

vehicular propulsion system where the amount of tractive power from the electric

traction motor may be relatively low in comparison to the ICE. Ex. 1003, ¶ 60.

Claims 1-7 - Claims 1-7 recite “a method for controlling a propulsion system in a

hybrid vehicle” describing the functions of structure recited in claims 8-14 (e.g.,

sensors, processors, a memory, actuators). The following table identifies the

portions of the arguments presented for claims 8-14 that apply to claims 1-7.

Claim Corresponding Argument 1 See Ground 2, [8.0] – [8.5], supra 2 See Ground 2, [9.0] – [9.1], supra 3 See Ground 2, [10.0], supra 4 See Ground 2, [11.0], supra 5 See Ground 2, [12.0], supra 6 See Ground 2, [13.0], supra 7 See Ground 2, [14.0], supra



32

See Ground 2, [8.0], supra.


As previous discussed, Mikami teaches a torque threshold range between a

first threshold value P1 and a lower available torque value for the vehicle. See

Ground 2, [8.2], supra. Mikami describes that “the first threshold value P1 is

determined by experiments, so as to minimize the exhaust gas emissions and the

fuel consumption, depending upon the energy efficiency during running of the

vehicle[.]” Ex. 1005, 14:36-39 (emphasis added). Mikami describes that the torque

threshold range defined by the first threshold value P1 corresponds to a region of

high drive system efficiency, stating that “[w]hen the currently required output Pd

is equal to or smaller than the first threshold value P1 . . . the energy efficiency is

higher and the fuel consumption and the amount of exhaust gas emissions can be

made smaller when the vehicle is driven by the motor/generator 12 (in the

operation mode 1) than when the vehicle is driven by the engine 10 (as in operation

mode 2).” Ex. 1005, 15:1-12 (emphasis added); Ex. 1003, ¶ 61. Mikami further

describes a “medium-load running state” occurs when Pd is “within a

predetermined range between P1 and P2,” where P2 is a “second threshold.” Ex.

1005, 15:31-16:6. “[T]he second threshold value P2 is determined by experiments,

so as to minimize the exhaust gas emissions and fuel consumption.” Id. “In the

medium-load running state of the vehicle, the energy efficiency is generally higher


33

when the vehicle is driven by the engine 10 than when the vehicle is driven by the

motor/generator 12.” Ex. 1005, 17:9-12. Thus, in its torque threshold ranges based

on P1 and P2 and its control algorithm, Mikami has mapped the required output Pd

to motor/generator or engine high and low efficiencies and uses that map of

efficiency in its control algorithm to determine which operation mode, EV, engine

or both, to employ. Ex. 1003, ¶ 61.

Accordingly, discloses “mapping respective regions of relatively high and

low efficiency in an efficiency map for the propulsion unit” as recited in the claim.


As described above, Mikami teaches that the torque ranges corresponds to

regions of high and low efficiency. See Ground 2, [15.1], supra; Ex. 1003, ¶ 62.

Therefore, the “the operating amount ΘAC of the accelerator pedal” of Mikami,

which, as described previously, is a signal indicative of torque demand, is also a

signal indicative of a region of high or low efficiency. See Ground 2, [8.1], supra;

Ex. 1003, ¶ 62. Accordingly, Mikami discloses “sensing a signal indicative of said

regions of relatively high and low efficiency” as recited in the claim.

[15.3]: “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”

As previously discussed, Mikami teaches that the torque demand value



34

Thus, controlling operation of the drive system based on the torque demand value


required torque value. Ex. 1003, ¶ 62. Accordingly, Mikami teaches this claim




As previously discussed, Mikami teaches that the torque demand value


Thus, controlling operation of the drive system based on the torque demand value


torque demand value. Ex. 1003, ¶ 62. Accordingly, Mikami teaches this claim



Claim 16 - [16.0]: “The control system of claim 15 wherein the propulsion unit is selected from the group consisting of an internal combustion engine, and a fuel cell.”

See Ground 2, [8.5], supra (“The hybrid drive system 8 includes an engine

10 such as an internal combustion engine operated by combustion of a fuel.” Ex.

1005, 4:38-40 (emphasis added).



35




Ground 2, [15.0] – [15.4], supra.

C. GROUND 3 – Claims 1-17 are unpatentable over Mikami in view of Kitada under 35 U.S.C. § 103

For at least the reasons described below, claims 1-17 are unpatentable over

Mikami in view of Kitada.

Claim 8 - The following discussion identifies example disclosure in Mikami in

view of Kitada that teaches the elements of claim 8:

Claim Language Mikami and Kitata [8.0]: “A control system for controlling propulsion equipment in a hybrid vehicle including a traction motor and an internal combustion engine, the control system comprising:”

See, e.g., Ground 2, [8.0], supra




See, e.g., Ground 1, [8.2] and Ground 2, [8.2], supra.





[8.5]: “during conditions when the signal indicative of See, e.g., Ground 2,


36

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.”

[8.5], supra

[8.2] “memory for storing a threshold torque range indicative of conditions of relatively low vehicle torque demand”

Mikami in view Kitada renders obvious a memory for storing a threshold

torque range indicative of conditions of relatively low vehicle torque demand. As

previously discussed, Mikami describes its controller includes “a microcomputer

incorporating a central processing unit (CPU), [and] a random-access memory

(RAM)” for storing Mikami’s algorithm and parameters, including its threshold

ranges such as those based on P1. See Ground 2, [8.2], supra. As also discussed

above, Kitada discloses a threshold torque range corresponding to a motor mode

range of relatively low “required torque” values corresponding to different rotation

speeds. See Ground 1, [8.1], supra. See also Ex. 1003, ¶ 63.

Accordingly, using Kitada’s threshold torque range corresponding to a

motor mode range of relatively low “required torque” in Mikami’s system, stored

in Mikami’s controller’s memory, renders obvious “memory for storing a threshold

torque range indicative of conditions of relatively low vehicle torque demand” as

recited in the claim.

Reasons to combine Mikami and Kitada


37

It is reasonable to assume that the primary control decisions in Mikami are

made on the basis of torque threshold values, as opposed to thresholds in another

domain. Ex. 1003, ¶ 64. But even if one does interpret Pd, P1 and related values to

not be indicative of torque, it would have been obvious to make the decisions on

the basis of commanded torque as taught by Kitada, i.e. modify Mikami in view of

Kitada, because the combination amounts to the use of a known technique to

improve similar devices in the same way. Ex. 1003, ¶ 64. See KSR v. Teleflex, 550

U.S. 398, 417 (2007); MPEP § 2143 I(C).

One of skill in the art would have been motivated to use the techniques

described in Kitada with Mikami’s system to control the operations of the hybrid

drive system based on torque and threshold torque ranges. Ex. 1003, ¶ 65. Such a

modification would allow Mikami’s system to control based on the engine and

motor operation alone, and not based on the current speed of the vehicle or drive

shaft. Id. Additionally, since “the operating amount ΘAC of the accelerator pedal” is

a signal indicative of torque demand, the control input compared to the threshold

ranges, would be in the same domain, i.e., torque, and would not require

conversion to another domain, such as power. Id. The results of such a

combination would have been predictable, because Kitada’s system operates so

similarly to Mikami’s system. Id.

Claims 2-17 - Claims 2-17 are obvious for the same reasons discussed in Ground


38

2. The following table identifies the portions of the arguments presented in Ground

2 that apply to claims 2-17 in the present Ground.

Claim Corresponding Argument 1 See Ground 2, [8.0] - [8.5], supra 2 See Ground 2, [9.0] – [9.1], supra 3 See Ground 2, [10.0], supra 4 See Ground 2, [11.0], supra 5 See Ground 2, [12.0], supra 6 See Ground 2, [13.0], supra 7 See Ground 2, [14.0], supra 8 See Ground 2, [8.0] – [8.5], supra 9 See Ground 2, [9.0] – [9.1], supra 10 See Ground 2, [10.0], supra 11 See Ground 2, [11.0], supra 12 See Ground 2, [12.0], supra 13 See Ground 2, [13.0], supra 14 See Ground 2, [14.0], supra 15 See Ground 2, [15.0]-[15.4], supra 16 See Ground 2, [8.5], supra 17 See Ground 2, 17, [15.0]-[15.4], supra

D. GROUND 4 – Claims 1, 4, 6, 8, 11, 13, 15, 16, and 17 are unpatentable over Fujieda under 35 U.S.C. § 102


Fujieda describes “a hybrid automobile having an internal-combustion

engine and an electric motor” in which “one of single operation of the internal-

combustion engine, single operation of the electric motor and concurrent operation

of the internal-combustion engine and electric motor are appropriately chosen

depending on magnitude of required load while travelling[.]” Ex. 1006, ¶ 0006


39

(emphasis added).

Accordingly, discloses a “control system for controlling propulsion

equipment in a hybrid vehicle including a traction motor and an internal



Fujieda describes that “a required load ‘P’ is calculated” for the vehicle. Ex.

1006, ¶ 0012. The required load is the amount of torque demanded from the drive

system based on the current conditions (i.e., the current vehicle torque demand).

See id. at Claim 2 (“required load exceeds the torque of the internal-combustion

engine”); Ex. 1003, ¶ 66-67. The required load ‘P’ is be based on an input from a

component monitoring the operation of the vehicle (i.e., based on a signal from a

sensor). See id.; Ex. 1003, ¶ 68. Accordingly, Fujieda describes determining a

required load during vehicle operation by monitoring current vehicle conditions,

thereby disclosing “a sensor coupled to sense a signal indicative of vehicle torque

demand” as recited in the claim. Ex. 1003, ¶ 68.


Fujieda describes providing a “certain value” (i.e. a load threshold) for the

required load chosen such that when the “required load "P" is considerably low

beyond [the] certain value . . . the load "P" required at that time does not reach yet

the peak fuel economy load of the internal-combustion engine[.]” Ex. 1006, ¶


40

0013. Because the current required load P is compared to the load threshold to

determine an operating mode for the vehicle (as described below), the certain value

must be stored by a component of the system (i.e., a memory). See id.; Ex. 1003, ¶

69. Accordingly, the load threshold of Fujieda that is compared against a currently

required load for the vehicle teaches “memory for storing a threshold torque range

indicative of conditions of relatively low vehicle torque demand” as recited in the

claim.


Fujieda describes that “one of single operation of the internal-combustion

engine, single operation of the electric motor and concurrent operation of the

internal-combustion engine and electric motor are appropriately chosen depending

on magnitude of required load while travelling[.]” Ex. 1006, ¶ 0006 (emphasis

added). Fujieda further describes that the “required load ‘P’” is compared to the

load threshold (discussed above at [8.2], supra) to determine whether to operate

the vehicle with only the electric motor or only the internal combustion engine. See

Ex. 1006, ¶ 0013; Ex. 1003, ¶ 70. The operation of comparing the required load to

the load threshold during operation of the vehicle could not be implemented by

mechanical means alone, and therefore must be performed by an electronic

component (i.e. a processor). Accordingly, Fujieda’s component for calculating


41

and comparing the required load to the load threshold is “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” as recited in the claim.

Ex. 1003, ¶ 70.





on magnitude of required load while travelling[.]” Ex. 1006, ¶ 0006. In particular,

Fujieda states that when the “required load "P" is considerably low beyond” the

load threshold “it is not necessary to operate the internal-combustion engine from a

fuel economy point of view; a single operation of electric motors suffices[.]” Id. at

¶ 0013 (emphasis added). Fujieda also teaches that “the second clutch 5”

connecting the internal-combustion engine to the wheels “is disengaged so as to

allow only the electric motors 8 to operate[.]” Id. at ¶ 0010 (emphasis added).

Accordingly, driving the vehicle with only the electric motor and disconnecting the

engine from the drive system when the currently required load is less than the load

threshold, as taught by Fujieda, discloses “during conditions when the signal


42

indicative of vehicle torque demand is within the threshold torque range,

generating 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” as recited in the claim.





on magnitude of required load while travelling[.]” Ex. 1006, ¶ 0006 (emphasis

added). Fujieda describes that when the required load is above the load threshold,

the mode for single operation of the internal-combustion engine. Ex. 1006, ¶¶

0013-0014; Ex. 1003, ¶¶ 71-72. When the vehicle operates in this mode, “the

second clutch 5 is reconnected to transmit the torque of the internal-combustion

engine to the rear wheels[.]” Id. at ¶ 0011. Accordingly, driving the vehicle with

only the engine when the currently required load is greater than the load threshold,

as taught by Fujieda, discloses “during conditions when the signal indicative of

vehicle torque demand is outside the threshold torque range, generating a signal

configured to deactivate the electric traction motor from drivingly propelling the


43

vehicle while re-engaging the internal combustion engine to propel the vehicle” as



Fujieda describes that “it is necessary to take the charge capacity of a battery

into account” when determining whether to operate the vehicle with only the

electric motor. See Fujieda, ¶ 0020; Ex. 1003, ¶ 73. For example, if Fujieda’s

battery has no charge, it cannot operate the vehicle with only the electric motor.

Ex. 1003, ¶ 73. Fujieda, thus, discloses “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”.


The ’601 Patent defines the term “parallel-hybrid” as follows: “As used

herein, a parallel-hybrid generally comprises a vehicular propulsion system in

which tractive power may be selected from either of at least two distinct power

sources, typically, an ICE and an electric motor.” Ex. 1001, 4:9-14 (emphasis

added). As previously described, the drive system of Fujieda includes an internal

combustion engine and an electric motor. See Ground 4, [8.0], supra. Thus,

Fujieda’s “hybrid comprises a parallel-hybrid.” Ex. 1003, ¶ 74.

Claims 1, 4, and 6 - Claims 1, 4 and 6 recite “a method for controlling a


44

propulsion system in a hybrid vehicle” describing the functions of structure recited

in claims 8, 11, and 13 (e.g., sensors, processors, a memory, actuators). The

following table identifies the portions of the arguments presented for claims 8, 11,

and 13 that apply to claims 1, 4 and 6.

Claim Corresponding Argument 1 See Ground 4, [8.0] – [8.5], supra 4 See Ground 4, [11.0], supra 6 See Ground 4, [13.0], supra


See Ground 4, [8.0], supra (“[A] hybrid automobile having an internal-

combustion engine and an electric motor.” Ex. 1006, Abstract)


Fujieda states that “[a]n object of the present invention is to enhance the

efficiency particularly of the internal-combustion engine.” Ex. 1006, ¶ 0004

(emphasis added). To this end, Fujieda describes providing a “certain value” (i.e. a

load threshold) for the required load chosen such that when the “required load ‘P’

is considerably low beyond [the] certain value . . . the load ‘P’ required at that time

does not reach yet the peak fuel economy load of the internal-combustion

engine[.]” Ex. 1006, ¶ 0013 (emphasis added). Because the internal-combustion

engine does not reach peak fuel economy when the required load is below the load

threshold, this region of load values is a relatively low efficiency region. Ex. 1003,


45

¶ 75; see Ex. 1006, ¶ 0013. Conversely, required loads above the load threshold

offers better fuel economy, and therefore this region of load values is a high

efficiency region. Ex. 1003, ¶ 75; see Ex. 1006, ¶ 0013. Thus, in its threshold

ranges and its control algorithm, Fujieda has mapped the load “P” to

motor/generator or engine high and low efficiencies and uses that map of

efficiency in its control algorithm to determine which operation mode, EV, engine

or both, to employ. Ex. 1003, ¶ 76.

Accordingly, Fujieda discloses “mapping respective regions of relatively

high and low efficiency in an efficiency map for the propulsion unit” as recited in

the claim.


Fujieda senses the information needed to calculate the required load “P.” Ex.

1006, [0012]. As described above, Fujieda teaches that load values “P” above and

below the load threshold are in regions of relatively high and relatively low

efficiency, respectively. See Ground 4, [15.1], supra. Accordingly, determining the

current required load of the vehicle, as discussed previously, teaches “sensing a

signal indicative of said regions of relatively high and low efficiency” as recited in

the claim. See Ground 4, [8.2], supra. Ex. 1003, ¶ 77.

[15.3]: “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


46

the propulsion unit from propelling the vehicle”

As described above, Fujieda teaches that load values above and below the

load threshold are regions of relatively high and relatively low efficiency,

respectively. See Ground 4, [15.1], supra. As also previously discussed, Fujieda

teaches generating a signal to activate the electric motor while de-engaging the

internal-combustion engine when the current required load is below the load

threshold. See Ground 4, [8.4], supra. Load values below the load threshold are in

the relatively low efficiency region, as described above. See Ground 4, [15.1],

supra. Accordingly, generating a signal to activate the electric motor while de-

engaging the internal-combustion engine when the current required load is below

the load threshold (indicating a region of relatively low efficiency), as taught by

Fujieda, discloses “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” as recited in the claim. Ex. 1003, ¶ 78.


As described above, Fujieda teaches that required load values above and

below the load threshold are regions of relatively high and relatively low

efficiency, respectively. See Ground 4, [15.1], supra. As also previously


47

discussed, Fujieda teaches generating a signal to deactivate the electric traction

motor from drivingly propelling the vehicle while re-engaging the internal

combustion engine to propel the vehicle when the required load value is above the

load threshold. See Ground 4, [8.5], supra. Load values above the load threshold

are in the relatively high efficiency region, as described above. See Ground 4,

[15.1], supra. Accordingly, generating a signal to deactivate the electric traction

motor from drivingly propelling the vehicle while re-engaging the internal

combustion engine to propel the vehicle when the required load value is above the

load threshold (indicating a region of relatively high efficiency), as taught by

Fujieda, discloses “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” as recited in the claim. Ex. 1003, ¶ 78.

[16.0]: “The control system of claim 15 wherein the propulsion unit is selected from the group consisting of an internal combustion engine, and a fuel cell.”

See Ground 4, [8.0], supra (“[A] hybrid automobile having an internal-

combustion engine and an electric motor.” Ex. 1006, Abstract).






48

Ground 4, [15.0] – [15.4], supra.

E. GROUND 5 – Claims 1-4, 6-11 and 13-17 are unpatentable over Otsu under 35 U.S.C. § 102

Claim 8 - [8.0]: “A control system for controlling propulsion equipment in a hybrid vehicle including a traction motor and an internal combustion engine, the control system comprising:”

Otsu describes the invention as a “controlling apparatus for a hybrid car

[that] can arbitrarily select whether a hybrid car should be powered principally

with an engine or principally with a generator-motor.” Ex. 1007, Abstract. See

also, “Control Apparatus 150” in 9:6-13, 17:11-13 and FIGS. 10, 13, 31, and 32

discussed in more detail below. Otsu’s engine is described as an “internal

combustion engine” and its generator-motor is a traction motor in that “[t]he motor

drives the rear wheels.” Id., 1:7-9, 7:1-7. Accordingly, Otsu’s controlling apparatus

for controlling the internal combustion engine and electric driving means of a

hybrid vehicle, discloses a “control system for controlling propulsion equipment in

a hybrid vehicle including a traction motor and an internal combustion engine” as



Like the ‘601 Patent, Otsu uses an accelerator position sensor to sense a

signal indicative of torque demand. In particular, Otsu discloses that “An

Accelerator Opening Sensor 112 outputs the accelerator opening signal S112 which

relates to a detected operation amount (opening) of an accelerator pedal.” Id. at


49

10:43-46. FIG. 11 shows that the Accelerator Opening Sensor 112 is an input to

the Management Control Means 120, that, as shown in FIG. 10, is a component of

the Control Apparatus 150. Accordingly, Otsu’s Accelerator Opening Sensor is “a

sensor coupled to sense a signal indicative of vehicle torque demand” as recited in

the claim.


FIG. 13 of Otsu illustrates the “driving regions of the engine and the motor

of the hybrid car according to the present invention.” Ex. 1007, 17:11-13. The Y-

axis is “Torque Instruction Value Tq” and the X-axis is “Vehicle Speed V.” Id.,

17:14-33. Otsu explains that its control strategy implements the depicted driving

regions including, inter alia, “an ENGINE region in which the engine 61 drives the

car,” and “an EV region in which the car is driven only with the generator-motor

43” marked on the diagram. Id. Thus, for example, the region marked on FIG. 13,

below, is threshold torque range within which Otsu’s control system operates in

EV mode. Id.; Ex. 1003, ¶ 80. The diagram illustrates that as the Torque

Instruction Value Tq increases, Otsu’s control system transitions to operate other

modes, such as Engine or Engine + Motor mode. Ex. 1003, ¶ 80.


50

Ex. 1007, FIG. 13 (Annotated)

Torque Instruction Value Tq is shown in FIG. 11 as determined from the

output of the Accelerator Opening Sensor 112, and is thus indicative of torque

demand. Ex. 1007, FIG. 11; Ex. 1003, ¶ 81. The region marked on FIG. 13 above

is a region of relatively low vehicle torque demand, because it is nearer the 0 value

of the Y-axis than other driving regions. Ex. 1003, ¶ 81. Thus, the marked region

represents the claimed “threshold torque range indicative of conditions of

relatively low vehicle torque demand.” Ex. 1003, ¶ 81.

Otsu discloses throughout its description that aspects of its control system

implementing these driving regions, and thus the threshold torque range indicative

of relatively low vehicle torque demand, are stored in the memory of its control

apparatus 150 and subcomponents. Ex. 1007, 10:29-31, 10:56-60, 11:11-14, 11:21-

24, 13:27-30, 13:49-53, 17:44-46, 22:1-8, 22:27-32, 22:38-46, 23:38-40, 24:47-49,

24:56-58; 25,14-16, and 25:29-31; Ex. 1003, ¶ 82. It is necessary for Otsu to store

the control algorithms and their parameters, such as these threshold torque ranges,


51

for operation. Ex. 1003, ¶ 82. Indeed, the microcontrollers used in implementing

control systems such as Otsu’s are replete with memory, including memory not

only for long term storage, but also caches and operating memories used by the

processor in storing the control algorithms and their parameters while they are

being implemented. Ex. 1003, ¶ 82. Thus, Otsu has a memory for storing the

threshold torque range indicative of conditions of relatively low vehicle torque

demand. Accordingly, Otsu’s memory for storing its control algorithm and their

parameters, such as the threshold range of the marked region in FIG. 13 above,

teaches “memory for storing a threshold torque range indicative of conditions of

relatively low vehicle torque demand” as recited in the claim.


FIGS. 10 and 11 of Otsu show that the Management Control Means 120 of

Otsu’s Control Apparatus 150 processes the Torque Instruction Value. As

discussed above, the Torque Instruction Value is indicative of vehicle torque

demand, and defines the vertical axis in the diagram of driving regions of the

engine and motor, i.e., FIG. 13. Otsu explains that “[t]he management control

means 120 outputs a torque instruction value Tq obtained by processing based on

the sensor signal Ss1 to motor control means 130.” Ex. 1007, 9:6-24. “The motor

control means 130 outputs a control signal S130 obtained by processing based on


52

the torque instruction value Tq and a sensor signal Ss2 to the driving means 151.”

Id. Thus, Otsu’s Control Apparatus 150 includes a processor configured to use the

output from the Accelerator Opening Sensor 112 to determine the Torque

Instruction Value Tq and output a control signal based on whether the vehicle

torque demand is within the threshold torque range marked above on FIG. 13. Ex.

1003, ¶ 83. Accordingly, Otsu’s processor in the Control Apparatus 150 is “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”



As discussed above, FIG. 13 of Otsu illustrates that its Control Apparatus

can operate the vehicle in “an EV region in which the car is driven only with the

generator-motor 43.” Ex. 1007, 17:14-33. The region of FIG. 13 showing the

threshold torque range indicative of low torque demand, is an EV region.

Otsu describes the EV mode in connection with FIG. 5(b). “FIG. 5(b)

illustrates a case wherein the rear wheels 14 are driven only with the motor 43. The

motor 43 drives the rear wheels 14 through the motor shaft 53, motor side first

helical gear 69, motor side second helical gear 72, output gear 75, propeller shaft


53

76, differential gear 78, and rear axle 51.” Ex. 1007, 7:28-42. Otsu describes its

system automatically disconnects the engine, “[s]ince the engine 61 is stopped, the

one-way clutch 65 is put into an open condition.” FIG. 5(b) shows that the gears

between the motor 43 and the rear axle 51 are engaged (touching), while the clutch

connecting the engine 61 and the rear axle 51 is disconnected (apart). Ex. 1003, ¶

84.

Otsu discloses a “motor control means 130 [that] outputs a control signal

S130 . . . to the driving means 151.” Ex. 1007, 9:22-24. “The driving means 151

outputs such driving signals . . . as shown in FIG. 19 to the three-phase DC

brushless generator-motor 43 to control driving of the generator-motor 43.” Ex.

1007, 16:43-50.

Thus, when the engine is operated in threshold torque range marked on FIG.

13 above, the actuator of Otsu’s Control Apparatus, including the motor control

means 130, generates a signal to activate the motor to propel the vehicle and

generates a signal to disengage clutch 65 to de-engage the internal combustion

engine from propelling the vehicle. Ex. 1003, ¶ 85. Accordingly, this arrangement

discloses “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” as


54



As discussed above, FIG. 13 of Otsu illustrates that its Control Apparatus

can operate the vehicle in “an ENGINE region in which the engine 61 drives the

car.” Ex. 1007, 17:14-33. The “ENGINE” region is immediately above and outside

of the threshold torque range indicative of low torque demand marked above on

FIG. 13. Otsu describes the ENGINE mode in connection with FIG. 6(a). “FIG.

6(a) illustrates a case wherein the rear wheels 14 are driven only with the engine

61.” Ex. 1007, 7:43-54. Otsu describes that the motor 43 is deactivated from

propelling the vehicle, and rather “can act as a generator to charge the batteries

21.” Id. “[T]he engine 61 drives the rear wheels 14 through the engine side first

helical gear 68, the engine side second helical gear 71, output gear 75, propeller

shaft 76, differential gear 78, and rear axle 51 in this order.” Ex. 1007, 6:58-63; Ex.

1003, ¶ 86.

Thus, when the engine is operated outside of the threshold torque range

marked on FIG. 13 above, the actuator of Otsu’s Control Apparatus, including the

motor control means 130, generates a signal to deactivate the motor from

propelling the vehicle and generates a signal to engage clutch 66 to engage the


55

internal combustion engine to propel the vehicle. Ex. 1003, ¶ 87. Accordingly, this

arrangement of Otsu discloses “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” as recited in the claim.


Otsu describes a monitor, “battery remaining capacity sensor 111,” that

“outputs a battery remaining capacity signal S111 obtained by detecting the

remaining capacity of the batteries 21 to the mode discrimination means 125” of

the Control Apparatus 150. Ex. 1007, 10:24-27, FIG. 11. The remaining capacity

of the battery, i.e., its state of charge, is an operational parameter and is indicative

of operational conditions of the propulsion system. Ex. 1003, ¶ 88. Accordingly,

the battery remaining capacity sensor is “a monitor configured to monitor at least

one operational parameter indicative of environmental and/or operational

conditions of the propulsion system of the vehicle” as recited in the claim.


Otsu explains that “[a]s the battery remaining amount become small, engine

driving is performed at an early stage.” Ex. 1007, 17:53-67. “Consequently, as


56

shown in FIG. 25, the EV region becomes smaller compared with that of the case

of FIG. 13.” Id. Accordingly, Otsu’s varying the size of the EV region based on

battery remaining amount teaches “the value of the selected threshold torque range

is adjusted based on the value of the at least one operational parameter” as recited

in the claim. Ex. 1003, ¶ 88.


Otsu’s “battery remaining capacity sensor 111” is described as “detecting

the remaining capacity of the batteries 21,” i.e., the state of charge of the batteries

21. Ex. 1007, 10:24-27, FIG. 11. Ex. 1003, ¶ 89. The batteries 21 are the energy

source for the generator motor, in that the driving means 151 supplies the “battery

voltage Vb to the generator-motor 43.” Ex. 1007, 9:25-27, 9:34-55. Accordingly,

the operational parameter measured by Otsu’s battery remaining capacity sensor is

the claimed “state of charge of an energy source of the traction motor.”


Otsu’s “battery remaining capacity sensor 111” is described as “detecting

the remaining capacity of the batteries 21,” i.e., the state of charge of the batteries

21. Ex. 1007, 10:24-27, FIG. 11. Ex. 1003, ¶ 90. The batteries 21 are the energy

source for the generator motor, in that the driving means 151 supplies the “battery


57

voltage Vb to the generator-motor 43.” Ex. 1007, 9:25-27, 9:34-55. Otsu explains

that “[a]s the battery remaining amount become small, engine driving is performed

at an early stage.” Ex. 1007, 17:53-67. “Consequently, as shown in FIG. 25, the

EV region becomes smaller compared with that of the case of FIG. 13.” Id. The

state of charge of Otsu’s battery 21 is determinative of whether the motor is

activated to propel the vehicle, because, as shown in the annotated FIGS. 13 and

25, there are locations on the diagram of FIG. 13 within the EV driving region that

are outside the EV driving region in FIG 25. Ex. 1003, ¶ 90.

Ex. 1007, FIGS. 13 and 25 (Annotated)

Accordingly, Otsu’s battery remaining capacity sensor is “a sensor coupled

to sense a state of charge of an energy source of the traction motor,” and Otsu

adjusting the size of the EV driving region based on the output of the sensor

teaches “said state of charge being determinative of whether the electric traction

motor is activated to drivingly propel the vehicle.”



58

As discussed above, the ‘601 Patent defines a parallel-hybrid as “a particular

propulsion system in which the tractive power may be selected from either of at

least two distinct power sources, typically, an ICE and an electric motor.” Ex.

1007, 4:9-13.

As discussed above in Ground 5, [8.2]-[8.5], Otsu’s hybrid can operate in

“an ENGINE region in which the engine 61 drives the car,” and “an EV region in

which the car is driven only with the generator-motor 43.” Ex. 1007, 17:14-33.

Otsu’s engine “may be a gasoline engine, a diesel engine or other type of an

internal combustion engine,” i.e. an ICE. Ex. 1007, 18:42-44. Accordingly, Otsu’s

system discloses “the hybrid comprises a parallel-hybrid.” Ex. 1003, ¶ 91.


As discussed above, the ’601 Patent defines the terms “mild-parallel-hybrid”

as “a vehicular propulsion system where the amount of tractive power from the

electric traction motor may be relatively low in comparison to the ICE.” Ex. 1001,

4:14-17 (emphasis added).

As discussed above in Ground 5, [13], Otsu’s hybrid is a parallel-hybrid. It

can operate in “an ENGINE region in which the engine 61 drives the car,” and “an

EV region in which the car is driven only with the generator-motor 43.” Ex. 1007,

17:14-33. Otsu’s FIG. 13 shows that the EV region can occur at lower Torque


59

Instruction Values Tq and vehicle speeds than portions of the ENGINE region.

These EV regions of lower torque and speed values correspond to lower power

output from the motor than from the ICE, because power is a function torque

multiplied by rotational speed. Ex. 1008, p. 552. Thus, the tractive power from

Otsu’s motor “may be relatively low in comparison to the ICE” as required by the

claim. Ex. 1007, claim 14, (emphasis added). Ex. 1003, ¶ 91.Accordingly, Otsu

discloses that “the parallel-hybrid is selected from the group comprising a mild-

parallel-hybrid and a robust-parallel-hybrid” as recited in the claim.

Claims 1-4, 6 and 7 - Claims 1-4, 6 and 7 recite “a method for controlling a

propulsion system in a hybrid vehicle” describing the functions of the structure

recited in claims 8-11, 13 and 14 (e.g., sensors, processors, a memory, actuators).

The following table identifies the portions of the arguments presented for claims 8-

11, 13 and 14 that apply to claims 1-4, 6 and 7.

Claim Corresponding Argument 1 See Ground 5, [8.0] – [8.5], supra 2 See Ground 5, [9.0] – [9.1], supra 3 See Ground 5, [10.0], supra 4 See Ground 5, [11.0], supra 6 See Ground 5, [14.0], supra

VI. CONCLUSION

The cited prior art reference(s) identified in this Petition contain pertinent

technological teachings (both cited and uncited), either explicitly or inherently

disclosed, which were not previously considered in the manner presented herein, or


60

relied upon on the record during original examination of the ’601 Patent. In sum,

these references provide new, non-cumulative technological teachings which

indicate a reasonable likelihood of success as to Petitioner’s assertion that the

Challenged Claims of the ’601 Patent are not patentable pursuant to the Grounds

presented in this Petition. Accordingly, Petitioner respectfully requests institution

of an IPR for those claims of the ’601 Patent for each of the grounds presented

herein.

Respectfully submitted,

Dated: April 3, 2015 /Joshua A. Griswold/

Joshua A. Griswold, Reg. No. 46,310 Fish & Richardson P.C. P.O. Box 1022 Minneapolis, MN 55440-1022 T: 214-292-4034 F: (877) 769-7945

Attorneys for Petitioner


CERTIFICATE OF SERVICE

Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned

certifies that on April 3, 2015, a complete and entire copy of this Petition for Inter

Partes Review and all supporting exhibits were provided by email to the Patent

Owner by serving the correspondence address of record as follows:

Ascenda Law Group, PC 333 W San Carlos St., Suite 200

San Jose CA 95110

Email: [email protected] [email protected]

Tarek Fahmi of the Ascenda firm consented to electronic service.

/Jessica K. Detko/ Jessica K. Detko Fish & Richardson P.C. 60 South Sixth Street, Suite 3200 Minneapolis, MN 55402 (612) 337-2516

in the united states patent and trademark...

Documents