[00:00:00] Speaker 01: consolidated for argument purposes. [00:00:02] Speaker 01: They are 161412, Pace versus Ford Motor, 161647, Pace versus Ford Motor, and 161745, Pace versus Ford Motor Company. [00:00:48] Speaker 01: Ready? [00:00:48] Speaker 01: Let me just say at the outset that we made a determination early on in this proceeding that there was an overlap between the cases. [00:00:56] Speaker 01: The most efficient way to proceed would be to consolidate them for purposes of argument. [00:01:02] Speaker 01: You may or may not disagree, but that's where we are. [00:01:04] Speaker 01: But it would be helpful, I think, to me and to the rest of the panel if when you start to raise an issue or discuss an issue, if you could certainly identify what claim we're talking about, what patent we're talking about, and even which appeal we're talking about. [00:01:18] Speaker 01: That might be helpful in terms of proceeding. [00:01:20] Speaker 02: Thank you, Your Honor. [00:01:21] Speaker 02: May it please the court, Ruffin Cordell, on behalf of Petitioners. [00:01:24] Speaker 02: We are here on appeal of four decisions from the PTAB with respect to two different patents held by Petitioners, the 347 and the 388. [00:01:35] Speaker 02: And I will try to identify each appeal as I come to the term. [00:01:38] Speaker 02: And for lack of a better structure, I've intended to proceed in numerical order to take out the mystery. [00:01:46] Speaker 02: But there are a great number of issues, so let me dive in. [00:01:49] Speaker 02: I'd like to begin with the 1412 appeal and the construction of set point, which affects all the clamps. [00:01:55] Speaker 02: So the PTAB below said that a set point is simply a predefined torque value that may or may not be reselled. [00:02:05] Speaker 02: It's our position that that's insufficient, that they have denuded the term set point of any real meaning in the context of these patents. [00:02:12] Speaker 02: Did you propose an alternative construction? [00:02:14] Speaker 02: We did, we did. [00:02:15] Speaker 02: So our proposed construction, it continued, it had the same beginning, but it continued with [00:02:22] Speaker 02: at which a transition may occur. [00:02:24] Speaker 02: And the transition is the key to the construction and the meaning of said point. [00:02:29] Speaker 00: How do you respond to the fact that the specification says there's circumstances where a transition won't occur? [00:02:36] Speaker 02: That's right, because this method claims the circumstances where the transition does occur. [00:02:41] Speaker 02: And so in method claims, there are times when the method is satisfied and times when the method is not. [00:02:46] Speaker 02: The key here is that you have to have an active step. [00:02:49] Speaker 02: You have to perform the comparison that's recited, comparing road load to set point, and then an action takes place. [00:02:55] Speaker 02: That is the transition. [00:02:56] Speaker 02: The example we use is a thermostat. [00:02:59] Speaker 00: Why do you read in the claim language that's talking about the action taking place into the term set point? [00:03:05] Speaker 02: Because the term set point is not value. [00:03:08] Speaker 02: Dr. Severinsky could have simply put value into that claim. [00:03:11] Speaker 02: He could have put point. [00:03:12] Speaker 02: He could have put number. [00:03:14] Speaker 02: But he didn't. [00:03:15] Speaker 02: He used the term set point. [00:03:16] Speaker 02: And that set point has to be in the meaning. [00:03:19] Speaker 02: And the meaning, like in the case of a thermostat, is not just any arbitrary temperature that we set. [00:03:24] Speaker 02: I shouldn't say set. [00:03:26] Speaker 02: It's not just any arbitrary temperature, it's the temperature at which in an air conditioning system the compressor comes on. [00:03:32] Speaker 00: Oh, and thus there's hysteresis. [00:03:34] Speaker 02: There could be hysteresis. [00:03:35] Speaker 02: And again, if there are other conditions that doesn't defeat the fact that within that system there is an algorithm that says when you exceed the set point, turn on the compressor. [00:03:46] Speaker 02: It may be defeated for other reasons, and so there may or may not be satisfaction of that claim when it comes time for infringement. [00:03:52] Speaker 02: But the point is you have to have that structure there. [00:03:55] Speaker 02: You have to have the comparison that is made, and then the action is that transition. [00:04:00] Speaker 02: And that's a very important part of this. [00:04:02] Speaker 02: We know that not only because of the language that the inventor chose, set point as opposed to value or point or something else, [00:04:11] Speaker 02: But we know that because of the specification. [00:04:15] Speaker 02: The specification gives us a precise definition of set point, and it's an appendix, one of three, column 40, lines 46 through 55, where it tells us that the set point referred to in the appended claims as SP is sometimes used here and after as the transition point, i.e. [00:04:31] Speaker 02: between the modes 1 and 4. [00:04:34] Speaker 01: And sometimes, and there is a claim differentiation argument, right? [00:04:37] Speaker 01: But there is a dependent claim. [00:04:39] Speaker 01: There is. [00:04:40] Speaker 02: But I think that gets back to Judge Stone's question about his heresis and the fact that this condition doesn't necessarily exist every time. [00:04:47] Speaker 02: And again, there may not be infringement every time. [00:04:50] Speaker 02: But if there is some time infringement, if the condition is satisfied, [00:04:54] Speaker 02: And when road load exceeds a set point, the transition occurs, then in fact, that would satisfy the claimant. [00:05:00] Speaker 02: It doesn't have to be every time. [00:05:01] Speaker 02: We had a debate in one of the district court cases where we had actually advocated a construction saying that it must occur. [00:05:09] Speaker 02: That is a transition that must occur when a condition is satisfied. [00:05:13] Speaker 02: From a legal perspective, I don't think that really matters one way or the other because you can have sometimes infringement. [00:05:18] Speaker 02: Ford, in his brief, sort of took us to task for that, but I think they got it backward. [00:05:22] Speaker 02: We were advocating must at that point, and the district court said no, because it doesn't have to. [00:05:27] Speaker 02: You may have other conditions that intervene. [00:05:30] Speaker 02: And so as long as the condition is satisfied sometimes, as long as it may occur, as long as you have a system that does that comparison and affects a transition, that's enough. [00:05:40] Speaker 00: The court looked at the claim language in the wearing clause, for example, in claim one, and said that that claim language [00:05:47] Speaker 00: itself tells you what the set point is and defines it in terms of torque, right? [00:05:53] Speaker 00: And then that claim tells you, you know, the action that could occur is actually set forth in the language of the wherein clause. [00:06:01] Speaker 00: So that's what I meant by why do you have to read in that a transition will occur [00:06:05] Speaker 00: when the wherein clause itself says what action is going to occur. [00:06:08] Speaker 02: That's an excellent point because claim one is perhaps the most descriptive, if you want to put it that way, of the claims that we're here to talk about. [00:06:16] Speaker 02: When we look at claim 23, the transitions are less textual, perhaps. [00:06:24] Speaker 02: I don't know how to describe that. [00:06:26] Speaker 02: But they're still there. [00:06:27] Speaker 02: And so it's important when we're construing the term to preserve [00:06:31] Speaker 02: that concept, and that's why the district court did it. [00:06:34] Speaker 02: Because although you're right, in claim one it says, when the road load exceeds the set load, just start the engine. [00:06:39] Speaker 02: I mean, it tells you exactly, you go from mode one to mode four, right then and there. [00:06:44] Speaker 02: In the context of claim 23, it says, for example, employing both at least said one electric motor and said engine to propel said vehicle when the torque RL required to do so is more than MTO. [00:06:57] Speaker 02: And so the district court's feeling and our feeling is that, in fact, that when we talk about set point, we have to have the transition concept in there. [00:07:08] Speaker 02: Can I give the court an example of why the board's construction essentially strips all the meaning out of this claim? [00:07:14] Speaker 02: Imagine we had a system where we had an electric motor. [00:07:18] Speaker 02: So these are all hybrids. [00:07:19] Speaker 02: They have an electric motor and they have an engine. [00:07:21] Speaker 02: Imagine a system where they're both on at all times. [00:07:23] Speaker 02: As soon as you get in the car, you turn them on. [00:07:25] Speaker 02: The electric motor's active. [00:07:26] Speaker 02: The engine's active. [00:07:28] Speaker 02: It would satisfy the court's construction of claim 23, because the electric motor would be on when the road load is below any arbitrary value, and the engine and the electric motor would be on when it's above that value, and then they would both be on when it's above MTO. [00:07:44] Speaker 02: It strips the claim of any meaning. [00:07:46] Speaker 02: It's no longer a method of control. [00:07:49] Speaker 02: It's just an arbitrary set of conditions. [00:07:51] Speaker 02: And that's not what the claim says. [00:07:52] Speaker 02: The claim says a method of control with discrete steps that have to be satisfied. [00:07:57] Speaker 02: And so by taking this arbitrary value and imposing it on the claim, they've taken the concept a set point away, and what we have now are just a series of values that don't give the claim any meaning. [00:08:09] Speaker 01: I'm going to ask you to move on now, because the clock is running, and I think there are questions perhaps by the panel on the Severinsky reference, including on the battery limitations. [00:08:18] Speaker 02: So I wanted to address that. [00:08:19] Speaker 02: I will dive right in. [00:08:21] Speaker 02: So when we go to the factual side of this, the Severinsky reference, what we find is that the board failed to give us the kind of evidence and analysis that it's required to do under generating. [00:08:30] Speaker 02: So it's not enough for them to throw up their hands and cite an expert who says, well, that would have been obvious. [00:08:35] Speaker 02: And then they stop. [00:08:36] Speaker 02: They need to give us the evidence and the analysis to meet each and every one of those limitations. [00:08:40] Speaker 02: So let's start with the set point. [00:08:43] Speaker 02: And what the board points to is a recitation in the [00:08:48] Speaker 00: Which reference are you talking about? [00:08:50] Speaker 02: The Severinsky 970. [00:08:51] Speaker 02: It's terribly confusing, because both our inventor here and our inventor there is both black for Severinsky. [00:08:57] Speaker 02: But the 970 reference is relied on primarily in the 1412 appeal. [00:09:03] Speaker 02: And there they say, well, the Severinsky 970 reference tells us that the engine is most efficient between 60% to 90% of its MTO. [00:09:12] Speaker 02: But there's nothing disclosed anywhere that that's ever used to trigger anything. [00:09:17] Speaker 02: It's not a transition point. [00:09:18] Speaker 02: There's no comparison that's even made. [00:09:20] Speaker 02: So one of the things we can talk about the claim construction is the fact that even if we don't go so far as to have the transition requirement in the claim construction, nobody disputes that a comparison must be made. [00:09:33] Speaker 00: OK. [00:09:34] Speaker 00: Is it your point that? [00:09:35] Speaker 00: What Severinsky is relying on is speed instead of torque? [00:09:39] Speaker 02: It is, but my point is just a little bit different here in that there's simply a failure of the board to give us any analysis, any evidence that this 60 to 90 is used for any purpose. [00:09:51] Speaker 02: There's no algorithm. [00:09:52] Speaker 02: There's no comparison. [00:09:53] Speaker 02: There's no evaluation of it. [00:09:55] Speaker 02: It simply says, aspirationally, this is a good place to put the engine. [00:10:00] Speaker 02: And then what Dr. Severinsky in the 970 patent does tell us very explicitly over [00:10:05] Speaker 02: and over and over again, is the way you do that is with speed. [00:10:09] Speaker 02: So it turns out that there are lots of different ways you can control a hybrid. [00:10:13] Speaker 02: You can control it using the pedal position. [00:10:15] Speaker 02: Many early designs did that. [00:10:16] Speaker 02: The further you pressed down the pedal, you went through the electric motor to the engine to both, a straight line progression. [00:10:22] Speaker 02: Dr. Severinsky, when he did the 970 patent, thought speed was the right way to do it. [00:10:26] Speaker 01: Yeah, but we have a board decision, and we can characterize it however we want. [00:10:31] Speaker 01: But they did go through in some detail all of the arguments you made, including the fact that you said that Severinsky was expressly just limited to speed. [00:10:42] Speaker 01: And they cite portions of Severinsky which deal with the torque requirement. [00:10:46] Speaker 01: And they say, which I think is correct, that the two are not mutually exclusive. [00:10:50] Speaker 01: So why is what they have given us in combination with their reliance on Dr. Davis, the expert on the other side, sufficient to support the substantial evidence standard? [00:11:00] Speaker 02: Regardless of whether Speed is exclusive or not, that isn't my point. [00:11:04] Speaker 02: The point is they need to give you evidence that torque is being used, that that 60 to 90 range that's set forth in the 970 patent is somehow used to trigger something, compared to something. [00:11:15] Speaker 02: That is completely absent from this record, and they look at two different things when they attempt to do this. [00:11:21] Speaker 02: One, the first place is they look at the, they look at a passage that discusses the use of road load to decide whether or not, and I misspoke there, let me just... This is column 17? [00:11:39] Speaker 02: Yes, Your Honor, thank you. [00:11:40] Speaker 02: Column 17. [00:11:41] Speaker 03: Line 9. [00:11:42] Speaker 02: Line 11. [00:11:43] Speaker 02: That's right. [00:11:45] Speaker 02: And they are, it's not relevant, what they do is they look at this passage, it talks about the load imposed by the vehicle's propulsion requirements, and that's examined, but it's examined for one reason and one reason only, and it's to decide whether to charge the battery, and that is undisputed. [00:12:01] Speaker 02: that is undisputed. [00:12:02] Speaker 02: And we have paragraph 235 of Dr. Davis's declaration at appendix 1600, and then our expert at appendix 27, 36, and 37. [00:12:12] Speaker 02: It is undisputed that the passage at column 17 that Judge Schall pointed out has to do with charging the battery, has nothing to do with switching modes, and certainly nothing to do with starting the engine. [00:12:25] Speaker 02: And in fact, [00:12:27] Speaker 02: If you think about it, the engine already has to be on. [00:12:30] Speaker 02: So what that passage talks about is that the engine is running and is driving the car and the system says, hey, do I have enough energy left over here to charge the battery? [00:12:41] Speaker 02: That's all it says. [00:12:43] Speaker 02: It's not switching modes. [00:12:45] Speaker 02: It's not going from motor to engine or engine to motor. [00:12:49] Speaker 02: It is simply asking that fundamental question. [00:12:51] Speaker 02: The board takes that. [00:12:52] Speaker 02: courtesy of Dr. Davis' declaration, they said, well, look, there's some recognition that torque could be used. [00:12:59] Speaker 02: Well, perhaps, but it's a recognition that torque could be used to decide whether or not to charge the battery, not whether to start the engine, not whether to switch modes, not all of the other things that are cited in the claim. [00:13:12] Speaker 02: And so the intellectual leap that the board asks us to make without any support, save for Dr. Davis saying that it would be obvious. [00:13:20] Speaker 02: is just that. [00:13:21] Speaker 02: We are to take a bare mention that output of the engine could be evaluated in terms of load to determine whether or not to charge the battery. [00:13:31] Speaker 02: And we are to extrapolate that into the entirety of the control system. [00:13:34] Speaker 02: And that's a leap too far. [00:13:36] Speaker 00: I want to ask you about Kerosene for a minute. [00:13:38] Speaker 00: So you say that Kerosene doesn't talk about road load or torque. [00:13:43] Speaker 00: And instead, it uses pedal position. [00:13:47] Speaker 00: Correct. [00:13:47] Speaker 00: What I don't understand is I read your specification. [00:13:50] Speaker 00: And when you, I understand what road load is according to your specification, but when you're trying to determine, when the patent talks about determining what the road load, it talks about pedal position. [00:14:02] Speaker 00: So why isn't pedal position, you know, I think Kerasini talks about the input torque, the torque required to propel the car, but where are you coming up with the idea that there's something different in your specification other than pedal position for determining road load? [00:14:20] Speaker 02: So road load is determined using a variety of factors. [00:14:23] Speaker 02: Pedal position is one of them. [00:14:24] Speaker 02: The driver's commands are one of them. [00:14:26] Speaker 02: There's no question about that. [00:14:27] Speaker 02: But it's more than that. [00:14:28] Speaker 02: Imagine you were interviewing… Where in the patent is this? [00:14:32] Speaker 02: The patent actually doesn't tell us how to derive road load. [00:14:35] Speaker 02: So road load is a well-known concept. [00:14:38] Speaker 02: We had a lot of debate in front of the PTAB about whether we should go ahead and put in what it is that makes up road load. [00:14:44] Speaker 02: And everybody agreed you don't need to do that, because those of ordinary skill use the term. [00:14:47] Speaker 02: It's used in vehicle design. [00:14:49] Speaker 02: It's not an unknown concept. [00:14:51] Speaker 02: As a practical matter, the way it's calculated in a real vehicle is they use engine maps, and they do lots of driving and real-world testing to determine what road load is. [00:15:00] Speaker 02: And the road load does have as an input the pedal position, but it can't only be pedal position. [00:15:05] Speaker 02: Imagine you are pushing the pedal down at 30 degrees going uphill into a wind. [00:15:12] Speaker 02: Did you push the pedal down harder? [00:15:13] Speaker 02: Yes. [00:15:14] Speaker 02: Well, you would, perhaps. [00:15:16] Speaker 02: But again, pedal position is the input that Kerosene uses. [00:15:21] Speaker 02: And so at 30% going up a hill, the vehicle behaves in a radically different way than going down. [00:15:28] Speaker 02: And so the pedal position used as a control input, in Dr. Severinsky's view, was completely unacceptable. [00:15:35] Speaker 02: And we see that over and over and over again in the prior law. [00:15:37] Speaker 03: Mr. Cordell, let me ask you, getting back to the Severinsky point again that you were touching on earlier, the 347 patent itself does seem to characterize Severinsky's teaching, quoting, when the vehicle operating conditions require torque of an efficient magnitude, the engine is used to propel the vehicle. [00:15:59] Speaker 03: When less torque is required, an electric motor drives the vehicle. [00:16:03] Speaker 03: And I'm thinking here in the, this is the 347 patent, A96, column 25, lines 8 through 13, and perhaps similar provisions, which I won't read, at A92, column 18, lines 25 through 30, and A93, column 19, lines 36 through 41. [00:16:27] Speaker 03: That seems to be a nod [00:16:32] Speaker 03: to the proposition that torque, that the 347 patent is reading Severinsky as saying torque determines when you go into the engine mode. [00:16:44] Speaker 02: So focusing, again, I'm familiar with the passage of column 25 most often. [00:16:50] Speaker 02: There, what we have is the later characterization of the 970 patent using hindsight. [00:16:57] Speaker 02: And unfortunately, it uses some of the same language that's in the 347 patent. [00:17:00] Speaker 03: Well, it's the same inventor. [00:17:02] Speaker 02: Same inventor. [00:17:02] Speaker 02: Doesn't that mean something? [00:17:05] Speaker 02: Well, what he's saying is that it accomplishes some of the goals. [00:17:09] Speaker 02: It accomplishes using the engine in its efficient region. [00:17:14] Speaker 02: The question, though, is not whether it accomplishes the goals. [00:17:16] Speaker 02: The question is how. [00:17:17] Speaker 03: Does that suggest, though, that there's a recognition that maybe there's some relationship between speed and torque, like you have at columns 13 of the 970 pattern? [00:17:31] Speaker 02: Well, in the way that doesn't suggest that you're using torque as your control input, what it does is that [00:17:39] Speaker 02: It suggests that the speed system was pretty good. [00:17:42] Speaker 02: It was pretty good. [00:17:43] Speaker 02: So when you use a speed system, it turns out that in normal high speed operation, that's also a high torque operation. [00:17:50] Speaker 02: And in low-speed operation, that's normally a low-torque operation. [00:17:54] Speaker 02: That is generally true, but Dr. Severinsky discovered that the difference matters, that in fact you can gain extra efficiency if you use torque. [00:18:02] Speaker 03: So you're saying we shouldn't, for purposes of the analysis, we have to undergo here in the 1215 appeal. [00:18:09] Speaker 03: We shouldn't really think about these two sections I pointed to. [00:18:15] Speaker 02: The problem is that the characterization of the prior art and the patent doesn't change what was put out there to the public. [00:18:25] Speaker 02: So the public didn't have [00:18:27] Speaker 02: the later characterization of the 970 patent before the 347 was published. [00:18:32] Speaker 00: But the PTAB did, right? [00:18:34] Speaker 02: Well, the PTAB wouldn't either. [00:18:35] Speaker 02: They couldn't count that as prior art per se. [00:18:37] Speaker 00: They can, again... They can't rely on that as substantial evidence at all about the relationship, as Judge Schall was saying? [00:18:44] Speaker 02: We actually have a case that I'll... [00:18:47] Speaker 02: pull up and bring, that suggests that you aren't supposed to do that. [00:18:50] Speaker 02: You're not supposed to use a characterization of the prior art as to supplement missing pieces in the prior art. [00:18:57] Speaker 03: Would it make any difference if, that you have here, could this be viewed as some kind of an admission? [00:19:06] Speaker 03: Because we have the same inventor, who's the 347 and the 970. [00:19:12] Speaker 02: You know, I suppose that he could have been sufficiently explicit to rise to that level, but I don't think that's what we're talking about here. [00:19:19] Speaker 02: He's simply recognizing that in the 970, in using its speed-based system, achieved some of the same results. [00:19:26] Speaker 02: And if I could just cough out a couple of quick points here. [00:19:28] Speaker 02: I wanted to address the other what I thought was a significant factual problem with what the board did. [00:19:34] Speaker 02: The board looked at the 60% to 90% passage in the 970 patent, and they said, aha. [00:19:42] Speaker 02: That shows road load. [00:19:44] Speaker 02: They said that is road load. [00:19:46] Speaker 02: They confused the output of the engine with road load. [00:19:51] Speaker 02: And it's a profoundly wrong thing to do. [00:19:54] Speaker 02: And it's really a damning aspect of the board's decision. [00:19:57] Speaker 02: The question here is not what the output of the engine is. [00:19:59] Speaker 02: The question is, what do we do to turn the engine on in the first place? [00:20:04] Speaker 02: You can't use the output of the engine to decide when to turn the engine on because it would never come on. [00:20:09] Speaker 02: It's a nonsensical circular argument. [00:20:12] Speaker 02: If you're looking to see when the output of the engine exceeds a set point to decide whether to turn it on, it will never turn on because it starts out by definition at zero. [00:20:21] Speaker 02: The board made a fundamental fact error, and that's admitted by Dr. Davis at Appendix 28.12. [00:20:31] Speaker 01: Can you move on to the battery limitation? [00:20:33] Speaker 01: I know the clock is running. [00:20:35] Speaker 01: I can't. [00:20:35] Speaker 01: I don't know how much consequence this has in the scheme of things, but on claim 23. [00:20:41] Speaker 01: One of the things that troubles me is that the board seemed to be focused entirely, and that may have been because those were the arguments you were making, on the latter part of the phrase, when the state of charge indicates a desirability of doing so. [00:20:54] Speaker 01: And they said, reads on Severinsky, Severinsky talks about when the battery needs to be charged, at least on some occasions, at 10% to 20%. [00:21:03] Speaker 01: Now, you seem to be making an argument beyond that in your briefs, which deals with the former portion [00:21:11] Speaker 01: It's like a two-part limitation in the claim, right? [00:21:14] Speaker 01: You seem to be arguing the earlier part, using the torque between RL and SP. [00:21:20] Speaker 02: Right. [00:21:20] Speaker 02: So what that claim is talking about is that in normal operation, the battery is fully charged, you're driving along, and when the road load exceeds the set point, we've got to turn the engine out. [00:21:31] Speaker 02: There's an exception set forthright in the claim that says if the battery is low, you may need to lower the set point, basically. [00:21:37] Speaker 02: You need to start the engine at a lower set point because we also need to charge. [00:21:44] Speaker 00: I think what Judge Prost is asking, the claim talks about the difference, using the difference between set point and road load to charge the battery. [00:21:53] Speaker 00: It's how it's charging the battery. [00:21:56] Speaker 00: Did you argue that and rely on that limitation below? [00:21:58] Speaker 00: I think that's what she's asking. [00:22:00] Speaker 02: So how it's charging the battery, I didn't think was in great dispute. [00:22:05] Speaker 01: So I do read this phrase, using the torque between the RL and SP to drive, said, do you see that as a temporal limitation? [00:22:13] Speaker 01: Is this like when you charge the battery when this happens? [00:22:17] Speaker 02: It requires that, in fact, you activate the engine below a set point and use that torque at that time to charge the battery. [00:22:26] Speaker 00: It says, using the torque between RL and SP to drive [00:22:30] Speaker 00: said at least one electric motor to charge said battery. [00:22:33] Speaker 00: You're saying that's not disputed. [00:22:36] Speaker 02: I mean, it depends on what issue. [00:22:39] Speaker 02: I mean, it is certainly part of the claims. [00:22:41] Speaker 02: It's certainly something we don't think that the board proved. [00:22:44] Speaker 01: But why was the board wrong? [00:22:45] Speaker 01: My understanding of the board is they looked at the latter portion of the limitation. [00:22:49] Speaker 01: It says when the state of charge indicates a desirability of doing so. [00:22:53] Speaker 01: And they reference the fact that in the 970 patent, they talk about when the battery is low, it reaches 10% to 20%. [00:22:59] Speaker 01: That's when you do the charging. [00:23:01] Speaker 02: The problem is they don't evaluate the first part of that as a precedent, if I can call it that. [00:23:08] Speaker 02: They don't evaluate turning on the engine in the first instance with relationship to a set point. [00:23:13] Speaker 02: So it is true that in the 970 patent we have the passage in column 17 that talks about using excess energy from the engine to charge the battery. [00:23:22] Speaker 02: That I don't think is in dispute. [00:23:24] Speaker 02: What I think is in dispute is the fact that the board doesn't tell us that you ever evaluate the road load to activate the engine in the first instance, much less activate it at a lower level if the battery is in need of charging. [00:23:40] Speaker 01: I do know that the other side, maybe this is what you referred to, the other side references a provision in 970 that I don't think the board looked at, but again it could be because you weren't really making this precise argument, but they do talk about the portion in column 10 of 970 that talks precisely about when the vehicle starts down the hill the operator lifts his foot from the accelerator and [00:24:06] Speaker 01: kinetic energy of the vehicle and the engine's excess torque may be used to drive the motor as a generator so as to charge the batteries. [00:24:14] Speaker 01: That seems to be very close to what you're talking about. [00:24:16] Speaker 02: Well, that part is not disputed. [00:24:19] Speaker 02: So using excess energy to charge the battery is the way all hybrids work. [00:24:22] Speaker 02: So that has never been a bone of contention. [00:24:24] Speaker 02: What is a bone of contention is turning that engine on as a result of road load and then turning it on at a lower level if the battery is in need of charging. [00:24:32] Speaker 00: You're coasting down the hill. [00:24:34] Speaker 00: then the torque required to propel the motor must be lower than a set point, right? [00:24:38] Speaker 02: It is. [00:24:39] Speaker 00: And so when you're going down a hill and then you turn on, use the energy from the gas motor to send it to the battery, why doesn't that meet the limitation? [00:24:50] Speaker 02: That may well meet the limitation, but the gas motor had to have been on in the first instance. [00:24:54] Speaker 02: So what that section of claim 23 talks about [00:24:58] Speaker 02: is using the gas engine when those two conditions are satisfied. [00:25:02] Speaker 02: Either you're above set point or you're above set point plus the amount of torque required to charge the battery. [00:25:09] Speaker 02: And I apologize about the complexity, but it is a complex field. [00:25:12] Speaker 00: Do you think it's conventional, the part in the claim that talks about when you take if the motor's on and the amount, the excess amount of energy, which is defined in the claim as SP minus RL? [00:25:24] Speaker 00: Do you think that part is conventional? [00:25:26] Speaker 00: No, because SP is not conventional. [00:25:29] Speaker 00: Okay. [00:25:29] Speaker 02: So it is conventional to use excess torque from the engine or energy, usually it's talked about in terms of power. [00:25:36] Speaker 02: It's conventional to use excess power to charge the battery because it's free. [00:25:41] Speaker 02: It's essentially out there and you have systems like the Asani Prior Art where the engine is always running at a high constant power. [00:25:49] Speaker 02: That's what it does. [00:25:51] Speaker 02: And so what they do is they derive energy from it if it's not needed, if that power is not needed to drive the car, and then they contribute power back if it is needed to drive the car. [00:26:00] Speaker 02: It's called a peaking approach. [00:26:02] Speaker 02: It's a completely different architecture, but that's what they do. [00:26:04] Speaker 02: That's not uncommon. [00:26:06] Speaker 02: Is there any questions? [00:26:07] Speaker 01: Yeah, there's one. [00:26:08] Speaker 01: Let me turn you to, I think it's the 647, the 388 patent. [00:26:12] Speaker 01: I just had one question on the 388 patent, and that goes to claim three. [00:26:16] Speaker 01: Yes. [00:26:17] Speaker 01: Because I think the argument there, or at least what I boiled it down to, is that the board didn't give us any analysis. [00:26:24] Speaker 01: That's right. [00:26:24] Speaker 01: But when you look back at the record and the citations, and you even refer to some of this in the gray brief, is it not appropriate for us [00:26:33] Speaker 01: Or would it be inappropriate for us, given the board's conclusion, to go back to the citations to the record that you have and that your friend has, and to reach the conclusion of whether substantial evidence supports the board's conclusion? [00:26:48] Speaker 02: I think it's an abstraction issue. [00:26:50] Speaker 02: I think if there were very close calls, if you had a claim that was very similar to three others that had been fully analyzed, you might be able to do it. [00:26:57] Speaker 02: But Chenery tells us no, that the board as an administrative agency must give us the evidence and reasoning it used. [00:27:03] Speaker 02: And the two cases that they cite, NTP and NRA Hyatt, had a completely different sort of field than what we have here. [00:27:14] Speaker 02: The Claim 3 talks about adjusting a threshold that's used [00:27:18] Speaker 02: as part of this limiting the rate of change of the engine in relationship to the battery charging issue. [00:27:25] Speaker 02: It's a very complex but very specific issue. [00:27:28] Speaker 02: And the board just missed it. [00:27:30] Speaker 02: And so I plan to stand here and beg for at least action on that point alone. [00:27:36] Speaker 01: OK. [00:27:37] Speaker 01: You're well into re-rebuttal. [00:27:39] Speaker 01: We'll reserve the time you had. [00:27:40] Speaker 01: I guess you've got about five minutes left. [00:27:45] Speaker 01: OK. [00:27:45] Speaker 01: Thank you. [00:27:46] Speaker 01: Thank you. [00:27:48] Speaker 01: Mr. Moore. [00:27:53] Speaker 05: Good morning, Your Honors. [00:27:54] Speaker 05: May it please the Court. [00:27:56] Speaker 05: This case is about substantial evidence. [00:27:58] Speaker 05: Here, the case has raised approximately 30 factual issues. [00:28:03] Speaker 01: Wait a minute. [00:28:03] Speaker 01: It is if we get by the claim construction issues that your friend has raised. [00:28:08] Speaker 01: So on set point, at least. [00:28:11] Speaker 05: The claim construction issues, and the two primary ones would be rolled out in set point, really have no bearing on this case. [00:28:16] Speaker 05: First, let's take set point. [00:28:18] Speaker 05: With regard to set point, [00:28:20] Speaker 05: They have never explained in the brief why the setpoint construction really matters, because all they're trying to add to it is a transition. [00:28:27] Speaker 05: But all the prior art that deals with setpoint clearly shows a transition occurs at the setpoint. [00:28:34] Speaker 05: So even if the construction was right as they proposed, the prior art shows it. [00:28:38] Speaker 05: You've got the 970 pattern, Severinsky. [00:28:40] Speaker 05: It shows I'm going to run the motor up until 60% maximum torque output. [00:28:46] Speaker 05: Then I'm going to run the engine. [00:28:48] Speaker 05: A transition occurs at the lower set point, 60%. [00:28:51] Speaker 05: You've got the Bumby reference. [00:28:53] Speaker 05: The Bumby reference shows in figure 8 that I'm going to run the motor until I hit the lower torque bound. [00:28:59] Speaker 05: And once I hit that lower torque bound, the lower torque set point, [00:29:02] Speaker 05: I'm going to transition and the engine's going to operate. [00:29:04] Speaker 05: You've got Kerosene. [00:29:06] Speaker 05: Kerosene shows in Figure 9 that if that torque is a low requirement, I'm going to use the motor. [00:29:11] Speaker 05: Once that torque requirement from the pedal position starts going up, and once I hit a set point, then I'm going to transition until the motor. [00:29:19] Speaker 05: So the idea of set point doesn't distinguish any of the pieces of prior art because they all clearly show a transition. [00:29:25] Speaker 05: Also, in any event, the board's construction at set point is correct, clearly under the broadest reasonable construction. [00:29:32] Speaker 05: We heard some dispute in my friend's argument regarding value versus point, but they've never disputed that part of the construction before. [00:29:40] Speaker 05: The plain meaning of set point is just a value that's been predetermined. [00:29:44] Speaker 05: That's what the board found, and that part of the construction's never been contested before. [00:29:47] Speaker 00: It said torque value, right? [00:29:48] Speaker 05: A torque value, yes. [00:29:49] Speaker 05: And that was, they originally disputed that, then they withdrew their dispute. [00:29:53] Speaker 05: But he just said that there was a distinction between a set point wasn't just a value, but the board construed set point to be a predetermined value. [00:30:01] Speaker 05: And that part of the construction, a predetermined torque value, the idea that it's a value has never been disputed. [00:30:07] Speaker 05: And a set point can be a reference point, it can be an operational point, or it can be a transition point. [00:30:12] Speaker 05: And both the claims and the specification of the 347 patent are clear on that. [00:30:17] Speaker 05: But the plain meaning of set point clearly doesn't require a transition. [00:30:21] Speaker 05: Then let's look at the claim language. [00:30:23] Speaker 05: And the claim language here, just like the spec, clearly has cases like claim 1 and claim 23 where the set point doesn't require a transition. [00:30:31] Speaker 05: It doesn't say anything about a transition. [00:30:32] Speaker 05: In fact, it uses the term in a range context. [00:30:36] Speaker 05: And then you've got other claims, like claims 3, 4, 27, I think it is, that clearly specify a set point causing a transition. [00:30:45] Speaker 05: So when the claim director wanted a transition to occur, they expressly put it in the claim. [00:30:49] Speaker 05: When they didn't want a transition to occur, they didn't put it in the claim. [00:30:53] Speaker 05: You also look at how set point is used in the claims. [00:30:55] Speaker 05: It's used to denote the ends of ranges, not points at which things happen. [00:31:00] Speaker 05: The first element of claim 23 is employing the motor when the road load is less than a set point. [00:31:06] Speaker 05: So any time in the range less than set point, you employ the motor, you satisfy that range limitation. [00:31:12] Speaker 05: The second element is employing the engine [00:31:15] Speaker 05: in between the road load and the maximum torque output. [00:31:18] Speaker 05: It doesn't say employing the engine at the lower set point. [00:31:22] Speaker 05: It says employing the engine in between the lower set point and the maximum torque output. [00:31:27] Speaker 05: So it's anywhere in the range that would satisfy that limitation. [00:31:30] Speaker 05: It doesn't require a transition like the other claims that add the transition requirement. [00:31:35] Speaker 00: Can I ask you about Severinsky? [00:31:37] Speaker 00: Yes. [00:31:40] Speaker 00: How do you respond to Mr. Cordell's point [00:31:42] Speaker 00: about how this language that you rely on in column 20, line 64 through 67 or so, about the combustion engine is run only in the near vicinity of its most efficient operational point, the 60 to 90 percent sentence. [00:31:58] Speaker 00: How does that show the torque is actually being used to control when the engine is turned on and off? [00:32:05] Speaker 00: Why isn't that just a byproduct of using speed, for example? [00:32:09] Speaker 05: Because it says the internal combustion engine is run only in the near vicinity of its most efficient operating point. [00:32:18] Speaker 05: So the internal combustion engine is run only in that most efficient operating point, and then it states the most efficient operating point [00:32:26] Speaker 05: is the 60% to 90% of the maximum torque output. [00:32:32] Speaker 05: So it's telling you, I don't run my engine until I don't start my engine until I hit that 60% of what? [00:32:39] Speaker 05: Maximum torque, not speed. [00:32:42] Speaker 05: And it's amazing when you compare the consistencies between the claims that the 970 patent, when it defines the range of which I'm going to operate the engine, uses it in terms of maximum torque output exactly like the 347 patent. [00:32:56] Speaker 05: They both use the exact same language to denote that range. [00:32:59] Speaker 00: So you agree. [00:33:00] Speaker 00: Do you think that the 970 also teaches a separate control that would be the speed, or do you think that the speed and the torque are one and the same? [00:33:12] Speaker 05: No, it teaches both. [00:33:13] Speaker 05: You can use a torque-based set point, and you can use speed under certain conditions. [00:33:17] Speaker 05: And it makes sense. [00:33:18] Speaker 05: Another way that the Severinsky patent shows torque is it talks about the hill climbing mode. [00:33:23] Speaker 05: In the hill climbing mode, if I press my pedal 30% of the way, and I'm going 30 miles an hour on a flat surface, but I come to a hill, anybody who's driven a car knows the car's going to slow down if I keep the pedal pressed the same. [00:33:35] Speaker 05: because I need more torque to maintain that speed up the hill. [00:33:38] Speaker 05: So what do drivers do? [00:33:40] Speaker 05: They push the pedal down more to get more torque from the engine to maintain that 30 miles an hour going up the hill. [00:33:46] Speaker 05: In that situation, I can't use speed, because my speed hasn't changed. [00:33:52] Speaker 05: But I need more torque from my engine, and that may cause me to switch from my motor operation to my engine operation, so I have to use torque. [00:34:02] Speaker 00: The board relied on [00:34:17] Speaker 05: Column 20, line 63 through 67, which we've talked about. [00:34:20] Speaker 05: Column 7, lines 11 through 15, which also shows the starting characteristic, because it shows the internal combustion engine is operated only under the most efficient conditions. [00:34:32] Speaker 05: Most efficient conditions being 60 to 90 percent of maximum torque output. [00:34:36] Speaker 05: And it says, when the engine can be used efficiently, that's in that range, [00:34:42] Speaker 05: the engine is employed. [00:34:43] Speaker 05: It talks about using that same efficient range to determine when the engine is employed. [00:34:48] Speaker 05: It also relied on the admissions from the 347 patent that Judge Schall referred to on column 25, lines 4 through 16 of the 347 patent, where the 970 patent, Dr. Severinsky, who's the inventor in both the 347 patented issue, [00:35:04] Speaker 05: and the 970 patent. [00:35:05] Speaker 05: So when he was talking about the 970 patent, he knew what it was talking about. [00:35:08] Speaker 05: It wasn't just any patentee talking about a random piece of prior art. [00:35:12] Speaker 05: He was talking about his own patent. [00:35:14] Speaker 05: He knew how it worked. [00:35:16] Speaker 05: And he described in that passage that the 970 patent operates, quote, the internal combustion engine only at the relatively high torque output levels. [00:35:27] Speaker 05: Exactly what we're saying. [00:35:28] Speaker 05: That's 60% to 90%. [00:35:29] Speaker 05: He goes on to say, when the vehicle operating conditions require torque [00:35:34] Speaker 05: Of this approximate magnitude, the engine is used to propel the vehicle. [00:35:38] Speaker 05: He goes further to say, when there is less torque required, the motor drives the vehicle. [00:35:44] Speaker 05: So he's clearly showing that it's torque-based, not speed-based. [00:35:48] Speaker 05: And he's clearly showing that the torque is used to start the engine. [00:35:52] Speaker 05: And this is binding admissions. [00:35:54] Speaker 05: When a patentee talks about the prior art and makes admissions about it, it's a binding admission. [00:35:59] Speaker 01: Do you know, Mr. Cordell referred to a case, but I don't think he gave us the name, that there is a case in which we have, I guess, suggested that such reliance is inappropriate under certain circumstances. [00:36:10] Speaker 01: Do you know what he's referring to? [00:36:11] Speaker 05: Yes. [00:36:11] Speaker 05: There's two cases. [00:36:12] Speaker 05: First, the case that it's binding is our case. [00:36:15] Speaker 05: Pharma stem therapeutics verse via cell and that's at 941 fed third 1342 Pinpoint site 1362 federal circuit 207 then when a patentee makes submissions about the prior its binding the case that my friend relied on I'm so most the side games were 941 fit there 941 fed third 1342 pinpoint site [00:36:41] Speaker 05: 1362. [00:36:42] Speaker 03: I'm not sure we're up to 941.5 yet. [00:36:46] Speaker 03: Maybe I'm wrong. [00:36:48] Speaker 05: I will check that if my notes are correct. [00:36:54] Speaker 03: 491. [00:36:54] Speaker 03: So excuse me, 491. [00:36:55] Speaker 01: Thank you very much for that correction. [00:36:59] Speaker 01: Maybe in a couple of years we'll be there. [00:37:00] Speaker 01: We're not as productive as you thought we were. [00:37:02] Speaker 05: Thank you. [00:37:02] Speaker 05: My typing is a little sloppy. [00:37:05] Speaker 05: The case that they relied on was Clearwater Systems versus Evapo. [00:37:10] Speaker 05: What's the site for them? [00:37:12] Speaker 05: That one is 394, Fed Appendix 699, 705, Fed Circuit [00:37:23] Speaker 05: 2010. [00:37:24] Speaker 01: So that's a non-preq. [00:37:28] Speaker 05: It's also completely distinguishable. [00:37:30] Speaker 05: In that case, you had a situation where there was a prior art apparatus patent. [00:37:36] Speaker 05: And then the patent issue was a method patent. [00:37:40] Speaker 05: And in the method patent, they described the prior art patent. [00:37:43] Speaker 05: And the district court did an inherent anticipation analysis. [00:37:47] Speaker 05: It found inherent anticipation [00:37:50] Speaker 05: of the method claims of the patent at issue based on the apparatus claims not by reading the claims of the patent on the prior art. [00:37:59] Speaker 05: They did it by reading the claims of the patent on the patent's own description of the prior art and finding it inherent. [00:38:07] Speaker 05: And so the court reversed and sent it back because they found that an improper anticipation analysis because in anticipation analysis you're supposed to compare the claims at issue to the prior art. [00:38:19] Speaker 05: Not to the patent's description of the product. [00:38:21] Speaker 03: I'm sorry, I have two questions. [00:38:23] Speaker 03: One relating to this turning on the motor issue. [00:38:27] Speaker 03: How again, and this is for the benefit of the uninitiated, namely me, how again does speed translate to torque value? [00:38:36] Speaker 05: Power equals torque times speed. [00:38:38] Speaker 05: That's the basic equation. [00:38:40] Speaker 05: And when somebody of ordinary skill in the art is talking about a gas pedal, they're asking for power or torque. [00:38:45] Speaker 05: They're referred to as kind of twin sisters. [00:38:47] Speaker 05: They're very similar, but there are differences between the two. [00:38:51] Speaker 05: And so power equals torque times speed. [00:38:53] Speaker 05: And you can work that equation to be speed related to power or torque. [00:38:57] Speaker 03: My second question is this. [00:39:00] Speaker 03: Assume for the moment that one word to accept your argument [00:39:05] Speaker 03: that the Bumby references render unpatentable claims 21 and 23, OK? [00:39:12] Speaker 05: OK. [00:39:14] Speaker 03: I like that argument. [00:39:16] Speaker 03: Well, I understand. [00:39:16] Speaker 03: I would think so. [00:39:18] Speaker 03: How, then, does the Severinsky issue still come into play? [00:39:25] Speaker 03: Because if Bumby renders 23 unpatentable, [00:39:30] Speaker 03: what is Severinsky still pertinent for? [00:39:34] Speaker 03: And tell me if I'm missing something. [00:39:39] Speaker 05: I believe there is an issue with Bumby. [00:39:41] Speaker 05: Bumby also reaches claims 37, but the Severinsky prior art reads on claim 36, but I'd have to check that. [00:39:52] Speaker 01: I thought that maybe Severinsky dealt with 1, 9, and 23. [00:39:56] Speaker 01: I don't know if that's right, but that's what I have marked. [00:40:00] Speaker 01: It does, yeah. [00:40:00] Speaker 01: Yeah. [00:40:02] Speaker 01: So you're saying Bumby reads on, I have it marked 1 and 23, so I think 9 is missing. [00:40:09] Speaker 03: So Severinsky's pertinent to 9. [00:40:12] Speaker 03: 9, correct. [00:40:13] Speaker 03: That's correct. [00:40:14] Speaker 03: If you are correct on Bumby, they're still pertinent for 9. [00:40:19] Speaker 03: Yes. [00:40:21] Speaker 05: In Severinsky, you know, one of the issues that came up with Severinsky is the battery charging limitations. [00:40:25] Speaker 05: Right. [00:40:25] Speaker 05: Here, Severinsky clearly shows the battery charging limitation. [00:40:30] Speaker 05: The court referred to one example, which is the coasting. [00:40:33] Speaker 05: There's three examples where, first of all, we think the timing consideration on the limitation in claim 23, when it says employing the engine to propel the vehicle, when the road load is less than a set point, and using the difference between road load and set point to charge the battery. [00:40:48] Speaker 05: The only time limitation that the board found that we think exists is when it's desirable to do so. [00:40:54] Speaker 05: And that makes sense because your whole idea of these systems is to use the motor to supplement the battery. [00:41:00] Speaker 05: So I want to use the motor to supplement the battery at low road load requirements and at very high road load requirements. [00:41:06] Speaker 05: And so if my battery isn't charged, I can't use the motor to achieve the efficient operating modes of the engine. [00:41:12] Speaker 05: So I always want to use the engine to charge the battery whenever the battery is low. [00:41:18] Speaker 05: And it shows that. [00:41:19] Speaker 01: Well, except isn't the plain language more limited, which says using the torque between RL and SP to drive at least one electric motor charge. [00:41:27] Speaker 01: So isn't that more limiting? [00:41:29] Speaker 05: No. [00:41:30] Speaker 05: Because all it's saying is you're going to do it when it's desirable to do so. [00:41:34] Speaker 05: You can't take the employing the engine when road load is less than a set point and separate it from using the road load between the set point. [00:41:44] Speaker 05: between the road load and the set point separately, because else you're reading the first part of the limitation inconsistently with the earlier limitation of the claim. [00:41:53] Speaker 05: The earlier limitation of the claim says employing the motor when road load is less than a set point. [00:41:58] Speaker 05: That's the basic operations of the engine. [00:42:00] Speaker 05: When you're using a low road load, you use the motor. [00:42:04] Speaker 05: This is in exceptional circumstances, so you've got to read the whole clause together. [00:42:08] Speaker 05: And here it's talking about you're employing the engine [00:42:12] Speaker 05: when road load is less than the set point, which is contrary to the earlier limitation we talked about. [00:42:17] Speaker 05: So you've got to read it with the next step that requires and using the engine, the road load between road load and set point to charge the battery. [00:42:25] Speaker 05: When? [00:42:26] Speaker 05: When does this exception occur? [00:42:28] Speaker 05: When it's desirable to do so. [00:42:30] Speaker 00: How do you know that it's the amount of torque or amount of power that's being applied is equivalent to the road load, I mean the set point minus the road load? [00:42:41] Speaker 05: Because the claim teaches, as we talked about with Severinsky, it talks about a heavy traffic mode where you have light charges. [00:42:47] Speaker 05: That's road load less than set point. [00:42:49] Speaker 05: It talks about coasting. [00:42:51] Speaker 05: That's road load less than set point charging the engine. [00:42:54] Speaker 05: It talks about going downhill. [00:42:55] Speaker 05: That's road load less than set point. [00:42:57] Speaker 05: So it clearly charges the engine when road load is less than set point. [00:43:00] Speaker 00: But the amount is the amount. [00:43:02] Speaker 00: That's what I'm asking about, the magnitude. [00:43:03] Speaker 05: Getting there, Your Honor. [00:43:04] Speaker 05: So we know it charges road load less than set point. [00:43:07] Speaker 05: But then we also know the Severinsky pattern repeatedly talks about when you operate this engine, you only run this engine between 60% and 90% of maximum torque. [00:43:17] Speaker 05: Column 20 said that. [00:43:19] Speaker 05: Column 7 said that. [00:43:21] Speaker 05: The 347 admission said that. [00:43:23] Speaker 05: They only want to run the engine when it's efficient. [00:43:25] Speaker 05: So what you do is when you couple those two teachings together, [00:43:28] Speaker 05: that I'm going to charge the engine when road load is less than set point. [00:43:31] Speaker 05: And when I run the engine, I'm going to run it efficiently in 60% to 90% of maximum torque output. [00:43:37] Speaker 05: That means that I'm going to use the road load in between road load and set point to charge the engine. [00:43:42] Speaker 00: Where did the PTAB say that? [00:43:44] Speaker 00: Because I think they may have just missed this one limitation on magnitude. [00:43:49] Speaker 05: Well, the PTAB's opinion on this is page A21 through 22 of the joint appendix. [00:43:57] Speaker 05: You've also got the board talking about this road load less than a set point on A21 and 22. [00:44:04] Speaker 05: It's also in the 1415 opinion of page A54. [00:44:09] Speaker 05: But there's also extensive expert testimony on this. [00:44:13] Speaker 05: And the expert testimony is if you're looking at the 1412 and 1415 appendix, that's at A1623 through 1625, A1664 through 66, [00:44:25] Speaker 05: A 7604 through 7611, A 7380 through 81, A 5846 through 51, and A 5779 through 85. [00:44:38] Speaker 05: So there is clearly substantial evidence supporting the board's conclusion. [00:44:42] Speaker 01: But the board didn't rely on that. [00:44:44] Speaker 01: I mean, the board's analysis is quite brief. [00:44:46] Speaker 01: It didn't cite to that expert testimony in its analysis, right? [00:44:50] Speaker 01: I'd have to go back and check. [00:44:51] Speaker 01: OK. [00:44:52] Speaker 01: I'm looking at 21 through 22. [00:44:54] Speaker 01: I mean, they do have some broad statements. [00:44:57] Speaker 01: It's a little less than clear, perhaps. [00:44:58] Speaker 01: They seem to just rely on the passage from Severinsky at column 18. [00:45:07] Speaker 05: And I believe that's expressly from the, when you know you're going to charge the battery or roll the less than set point, and you know you're going to do it efficiently. [00:45:14] Speaker 05: Because earlier in the board's opinion, they do refer to, you're only going to run the engine from 60% to 90% of maximum torque. [00:45:21] Speaker 05: You're simply coupling those two statements together. [00:45:25] Speaker 01: Can I move you on to the final point I raised with your friend, which is claim three in the 388 patent? [00:45:31] Speaker 01: Yes. [00:45:33] Speaker 01: Why isn't it really the most appropriate course for us to take, given the absence of any kind of analysis by the board, to remand it? [00:45:41] Speaker 01: Even if we were to agree or be inclined to agree with you, that if we were to weigh this evidence in the first instance, you may have the better argument [00:45:51] Speaker 01: Why isn't it really our job to send it back to the board so they can do analysis when the analysis was completely the conclusion with respect to claim 3 of the 38A? [00:46:01] Speaker 05: It's a conclusion, but it's a conclusion that's clearly not a typo. [00:46:04] Speaker 05: They repeatedly retreat claim 3 in the context of 1 and 19, and they repeatedly refer to it as being invalid. [00:46:11] Speaker 05: So in the context of finding it invalid, there are inherently obviousness. [00:46:15] Speaker 05: There are inherently factual issues that were found to support that. [00:46:19] Speaker 05: You're correct. [00:46:19] Speaker 05: There is not any analysis specifically of the defendant. [00:46:22] Speaker 01: Yeah. [00:46:22] Speaker 01: We don't know what facts they relied on to support that conclusion. [00:46:25] Speaker 01: So how can we possibly evaluate their analysis to conclude whether or not there was substantial evidence? [00:46:32] Speaker 01: They said nothing. [00:46:32] Speaker 05: I think that's up to the court's discretion other than substantial evidence, which is in the record. [00:46:36] Speaker 05: And I can cite to it if the court wants. [00:46:42] Speaker 05: Any further questions? [00:46:44] Speaker 04: I don't think we're set. [00:46:56] Speaker 02: court to respond to Judge Schall's question, yes, it was the Clearwater case. [00:47:00] Speaker 02: And the reason why I think that we need to look at this very carefully is that the PTAB didn't lie on any of [00:47:08] Speaker 02: the statements in the 347 about the 970 in support of its obviousance case. [00:47:12] Speaker 02: So that's why the Clearwater case, or the case the council just cited, aren't cited anywhere in the PTAP's opinion because they did not place any emphasis at all, no weight at all, on the characterization of the 970 patent by the 347. [00:47:25] Speaker 03: So you're saying we should not [00:47:27] Speaker 03: place any weight on it either. [00:47:29] Speaker 02: Correct. [00:47:29] Speaker 02: And under, again, under Chenery, they should have done that if in fact it formed a part of their analysis. [00:47:35] Speaker 02: But to the point on the merits, what Clearwater cautions is that it's not the later characterization of the prior art that counts. [00:47:42] Speaker 02: If Dr. Severinsky had written something that was factual, if he said back in 1998, people understood the following things were true, that might be a different matter. [00:47:56] Speaker 02: But that's not what we're talking about here. [00:47:57] Speaker 02: We're talking about his later characterization in the context of writing the 347 patent. [00:48:03] Speaker 02: And he recognizes that some of the concepts are in the 970. [00:48:06] Speaker 02: And what Clearwater says is that you aren't supposed to use those. [00:48:09] Speaker 02: Now, let me jump into some of the issues that my colleague raised. [00:48:14] Speaker 02: And just for the record, that's in footnote seven of our reply brief. [00:48:18] Speaker 02: We note that the PTAP did not deal with the entire clear water analysis and didn't rely on it. [00:48:25] Speaker 02: We talk about a transition point. [00:48:26] Speaker 02: And my colleague said, well, we see the transition point over and over again. [00:48:31] Speaker 02: We see it in the 60% to 90%. [00:48:32] Speaker 02: We see it in Bumbee that there's a lower bound. [00:48:34] Speaker 02: We see it in Kerosene because there's a figure there. [00:48:37] Speaker 02: But look at that very carefully. [00:48:39] Speaker 02: There is no analysis in any of these prior art references that say that you look at the torque and that you do something. [00:48:45] Speaker 02: There is no comparison at all. [00:48:48] Speaker 02: What we have in the 970 is the 60 to 90 range, but it simply tells us that that's aspirational. [00:48:55] Speaker 02: 60% of the total torque output of the engine is a hugely high number. [00:48:59] Speaker 02: If you look at the 347 patent, it talks about much lower thresholds [00:49:04] Speaker 02: to be used to turn on the engine. [00:49:07] Speaker 02: There is no suggestion anywhere that you would run an engine at that level. [00:49:11] Speaker 02: And to the point, the claim tells us the engine runs between set point and the maximum torque output, not 60% to 90%. [00:49:20] Speaker 02: The claim, this claim, claim 23, says we run between the set point and 100%. [00:49:28] Speaker 02: of the capacity of the engine. [00:49:30] Speaker 02: So it simply doesn't fit here. [00:49:32] Speaker 02: It was an aspirational statement in the 970. [00:49:34] Speaker 02: There is none of the support that you would need. [00:49:37] Speaker 02: There is no algorithm. [00:49:39] Speaker 02: There is no if-then-else statement. [00:49:41] Speaker 02: There is nothing to tell one of ordinary skill that you were to use torque as your input to your control. [00:49:47] Speaker 02: You're saying that for BUMBEE? [00:49:49] Speaker 02: Well, I'm starting with the 970, but I'll say that for BUMBEE next. [00:49:52] Speaker 00: What about the disclosure? [00:49:54] Speaker 00: page A5639 of the appendix where they actually use the words road load under a section of the UMBE article that's referring to optimum control of the hybrid electric drivetrain. [00:50:08] Speaker 02: Well, I would say two things. [00:50:10] Speaker 02: I would say, first, that what it's talking about there is pedal position. [00:50:13] Speaker 02: Remember what Bumby is talking about when it talks about the, quote, road load is, in fact, pedal position. [00:50:22] Speaker 02: But more than that, what Bumby is doing there, remember there are two different embodiments in Bumby. [00:50:27] Speaker 02: And we take the position of the Boston Scientific case. [00:50:30] Speaker 02: The board, at very least, should have explained how it is they were mixing those two embodiments, the theoretical and the practical embodiments, I'll call them. [00:50:38] Speaker 02: when Bumby himself or his students tell us you can't mix those two. [00:50:41] Speaker 02: That's why they had to go to the suboptimal approach, because they couldn't do it. [00:50:46] Speaker 02: But putting that aside, what Bumby is doing there is deciding which gears to choose in order to stay within a certain torque and speed box that's defined in the figures. [00:50:58] Speaker 02: And Your Honor, I asked counsel about the relationship between torque [00:51:02] Speaker 02: and speed. [00:51:03] Speaker 02: And it's a little bit like current and voltage. [00:51:06] Speaker 02: So you have current and you have voltage and electronic circuit. [00:51:09] Speaker 02: And then you have power, which is a combination of the two. [00:51:11] Speaker 02: But they are profoundly different concepts. [00:51:14] Speaker 02: And we know that because the experts agree that they are profoundly different concepts. [00:51:19] Speaker 00: But what about, I think the response was Mr. Moore said that [00:51:23] Speaker 00: He wasn't relying on saying speed is the same as torque. [00:51:26] Speaker 00: He was saying there was two different control inputs in Severinsky. [00:51:30] Speaker 02: Well, that may be, but we have seen no place in Severinsky where that torque input is being used. [00:51:36] Speaker 02: We see speed. [00:51:37] Speaker 02: We see speed explicitly. [00:51:39] Speaker 02: We have his 60 to 90 passage that says that the engine is used in that range. [00:51:44] Speaker 02: But, Your Honor, that is an engine sizing discussion. [00:51:47] Speaker 02: The question is, how big an engine should you pick so that our speed-based algorithm will put you in that range? [00:51:53] Speaker 02: That's what that discussion is all about. [00:51:55] Speaker 02: It has nothing to do with turning the engine on. [00:51:57] Speaker 02: It has everything to do with picking the sizing of the engine. [00:52:00] Speaker 02: If I could just say one last thing, it would be this, that the battery charging limitations that we spent some time talking about [00:52:11] Speaker 02: don't just depend on the notion that you're going to do it efficiently. [00:52:16] Speaker 02: We have to look at what the prior art tells us. [00:52:19] Speaker 02: And what the prior art tells us, so if we look at A21, the board's opinion that my colleague referred to, it cites the passage in Severinsky at column 18, 9 through 22 that says you do this every so often, perhaps one [00:52:33] Speaker 02: once per hour for a period of approximately 12 minutes. [00:52:37] Speaker 02: So none of the set point analysis, none of the difference analysis is obtained. [00:52:42] Speaker 02: Instead, [00:52:42] Speaker 02: It's a time-based system. [00:52:44] Speaker 02: We have the same thing in BUMBEE. [00:52:46] Speaker 02: In BUMBEE, it talks about a time-based system. [00:52:51] Speaker 02: And we see that in Appendix 7053, which is the Mazding thesis that sort of talks about all of them. [00:52:56] Speaker 02: But it makes it very clear that we're talking about a time-based system. [00:53:00] Speaker 01: Thank you. [00:53:01] Speaker 01: Thank you. [00:53:01] Speaker 01: Time has expired. [00:53:02] Speaker 01: We thank both sides. [00:53:03] Speaker 01: And the case is submitted. [00:53:05] Speaker 01: And that concludes the proceedings for this morning.