[00:00:04] Speaker 02:
The first case for argument is 18-1385, Pace versus Yonko.

[00:00:09] Speaker 02:
Mr. Cordell.

[00:00:12] Speaker 00:
Thank you, Rhonda.

[00:00:12] Speaker 00:
May it please the court, Ruffin Cordell on behalf of Pace.

[00:00:17] Speaker 00:
So we are here again.

[00:00:19] Speaker 00:
Is this it, or is there more coming?

[00:00:21] Speaker 00:
Well, I'm going to urge the court that this would be it.

[00:00:24] Speaker 00:
I'm going to ask for a reversal that would prevent us from doing it yet again.

[00:00:28] Speaker 00:
But this one's a little bit unique, although we have the benefit of having been through this before, and the court did a really nice job of analyzing the technology in the prior opinion.

[00:00:37] Speaker 00:
But just to level set where we are,

[00:00:40] Speaker 00:
Claim one of the 388 patent tells us that we are to limit the rate of change of output torque of the engine to manage emissions.

[00:00:48] Speaker 00:
That's what this thing was all about.

[00:00:49] Speaker 00:
It was an engine control claim.

[00:00:53] Speaker 00:
And then claim three comes in with something that's essentially counterintuitive to that and says that we understand emissions are important.

[00:01:01] Speaker 00:
We understand that we're going to control that rate of change of output torque.

[00:01:05] Speaker 00:
We're not going to have that black smoke coming out of the top of a tractor trailer

[00:01:09] Speaker 00:
smokestack when it's trying to accelerate.

[00:01:12] Speaker 00:
But we've got another problem in a hybrid in that we have to manage the battery.

[00:01:17] Speaker 00:
We have to manage the state of charge of the battery.

[00:01:19] Speaker 02:
And it doesn't in a very... Why is it counterintuitive what's in claim three if you've got Vitone?

[00:01:25] Speaker 00:
Because Vitone says nothing, Your Honor, about engine control whatsoever.

[00:01:30] Speaker 00:
So there are a myriad of ways that you could manage the problem

[00:01:34] Speaker 00:
that Dr. Stein identifies.

[00:01:36] Speaker 00:
He says, well, when the battery runs out, you can't use it.

[00:01:39] Speaker 00:
And that's true.

[00:01:41] Speaker 00:
The problem is that he essentially makes an inherency argument as if it is the only choice.

[00:01:46] Speaker 00:
And yet, there are many.

[00:01:47] Speaker 00:
And the record shows us that there are.

[00:01:49] Speaker 00:
And the director has done nothing to rebut that point.

[00:01:54] Speaker 00:
So for example, the 970 patent tells us that the way you manage

[00:01:59] Speaker 00:
the state of charge of the battery is you simply run the system at a higher power output.

[00:02:05] Speaker 00:
And then you arbitrate between devoting that power or torque to the wheels or to recharging the battery.

[00:02:11] Speaker 00:
And that's very close to what Vitone does.

[00:02:13] Speaker 00:
So Vitone has the same power split or torque split mechanism in its ECU.

[00:02:19] Speaker 00:
It decides not that we're going to activate one or the other.

[00:02:22] Speaker 00:
It simply allocates more torque to the system from the engine or the electrical system, the motor and battery,

[00:02:29] Speaker 00:
as is appropriate.

[00:02:30] Speaker 02:
So here's the issue, and this crops up in a lot of PTAB cases.

[00:02:34] Speaker 02:
We've got substantial evidence review.

[00:02:37] Speaker 02:
They have an expert, Dr. Stein.

[00:02:40] Speaker 02:
The board relied on him.

[00:02:43] Speaker 02:
And your answer to that, well, it was too conclusory.

[00:02:48] Speaker 02:
So that's kind of like a standard of review piled onto a standard of review.

[00:02:52] Speaker 02:
I mean, the board decided that it was not conclusory, that it was substantial.

[00:02:58] Speaker 02:
So what are we to do with that?

[00:02:59] Speaker 00:
Well, I would urge the court to look closely at what Dr. Stein says.

[00:03:03] Speaker 00:
So the entirety of his opinion is in paragraph 194 of his declaration.

[00:03:08] Speaker 00:
He repeats it a couple of times, but it's almost verbatim.

[00:03:10] Speaker 00:
And that's in appendix 240.

[00:03:13] Speaker 00:
And he gives us two sentences.

[00:03:15] Speaker 00:
His analysis is two sentences of analysis, and then he gives us two sentences of conclusion.

[00:03:20] Speaker 00:
And that's the sum total that the board relies upon.

[00:03:23] Speaker 00:
He says that the Tony discloses that the ECU determines the torque split

[00:03:28] Speaker 00:
between the engine and the electric motor based on inputs, including the accelerator pedal, the brake pedal, and the battery SOC.

[00:03:36] Speaker 00:
Now, what does that mean?

[00:03:36] Speaker 00:
That means that the Vittoni ECU simply decides how much torque to devote to the wheels from the engine versus the electric motor.

[00:03:45] Speaker 02:
But that's not the only thing.

[00:03:46] Speaker 02:
Let's start at 238 if we're talking about his discussion of Vittoni, right?

[00:03:51] Speaker 02:
Where am I?

[00:03:54] Speaker 00:
Well, we can.

[00:03:55] Speaker 00:
Um, goes on quite a bit about that.

[00:03:58] Speaker 02:
You've picked the conclusory statement, but the, what precedes that is a discussion of the Tony.

[00:04:04] Speaker 02:
It's quite detailed.

[00:04:06] Speaker 00:
He does.

[00:04:07] Speaker 00:
And he discusses the Tony though, in the context of claim one and what he's focused on is whether or not it shows just for a minute.

[00:04:14] Speaker 03:
He's talking about claim three though, starting on page two 38, right?

[00:04:18] Speaker 00:
Uh, he does.

[00:04:19] Speaker 03:
Okay.

[00:04:20] Speaker 03:
All right.

[00:04:20] Speaker 03:
I thought you said claim one, so I just wanted to make sure I was following where you were looking.

[00:04:25] Speaker 00:
That's right.

[00:04:25] Speaker 00:
But I think that what he does here is talks about the utilization of the battery in the context of claim one.

[00:04:32] Speaker 00:
I guess I should have been very clear.

[00:04:34] Speaker 00:
Thank you.

[00:04:35] Speaker 00:
And what it talks about here is using the ECU to arbitrate between use of the electrical system versus the mechanical system, the engine versus the motor.

[00:04:46] Speaker 00:
That's what he's talking about here.

[00:04:48] Speaker 00:
So he does nothing to address engine control.

[00:04:51] Speaker 00:
He does nothing to address

[00:04:52] Speaker 00:
the rate of change of output torque, which is the key limitation at issue.

[00:04:57] Speaker 00:
All he talks about here is that there is an ECU that arbitrates between these two.

[00:05:01] Speaker 00:
So I'm happy to go back to paragraph 189, if need be, and trace it all the way through.

[00:05:09] Speaker 00:
Because what he does is simply that.

[00:05:11] Speaker 00:
He does two things.

[00:05:12] Speaker 00:
That first sentence that I read talks about arbitrating between the ECU and the engine and the battery.

[00:05:17] Speaker 00:
And then the second sentence says, when the batteries run down, you can't use it anymore.

[00:05:22] Speaker 00:
Not a surprising statement.

[00:05:24] Speaker 00:
But what he doesn't tell us is how you address that problem.

[00:05:27] Speaker 00:
And there are many ways to address that problem.

[00:05:30] Speaker 00:
He essentially leaps to his conclusion saying that it would have been obvious because it's the only way to do it.

[00:05:36] Speaker 00:
An inherency or a KSR, you know, the only possible result kind of analysis.

[00:05:42] Speaker 00:
But we have none of that in the record.

[00:05:43] Speaker 00:
Instead, we have the opposite.

[00:05:45] Speaker 00:
We have the 970 patent analysis.

[00:05:47] Speaker 03:
Where is the inherency or the only way discussion?

[00:05:50] Speaker 03:
Because I'm looking at this and he says, at the very least, it would have been obvious because use of the electric motor is limited or precluded.

[00:05:59] Speaker 03:
I'm looking at paragraph 194, un-paged appendix, page 241.

[00:06:06] Speaker 00:
That's right.

[00:06:07] Speaker 03:
But I don't see where that's in.

[00:06:09] Speaker 03:
I guess you're looking at the next sentence.

[00:06:13] Speaker 00:
I'm sort of looking at both of them together, his conclusion.

[00:06:16] Speaker 00:
And the problem that I have is that he could say that if it were the only way.

[00:06:20] Speaker 00:
And he's not clear about this.

[00:06:21] Speaker 00:
I don't mean to suggest more is in his analysis than actually is.

[00:06:26] Speaker 00:
What he simply says is, look, the two statements he makes there at the end of 194 are kind of internally inconsistent.

[00:06:32] Speaker 00:
He says it's there.

[00:06:34] Speaker 00:
But if it's not there, it would be obvious.

[00:06:36] Speaker 03:
And what do you think of his reasoning for why it would have been obvious?

[00:06:40] Speaker 03:
He says, because use of the electric motor is limited or precluded, why isn't that sufficient?

[00:06:46] Speaker 00:
Because there are, again, a bunch of different ways that you could accomplish that.

[00:06:50] Speaker 00:
So just because the electrical system is limited doesn't mean that you would automatically leap to adjusting the threshold that's used to limit the torque rate of change.

[00:06:58] Speaker 00:
For example, in the 970 patent, what they do is they simply allocate more torque from the engine and less torque

[00:07:05] Speaker 00:
from the electric motor in the situation where the electrical system is depleted.

[00:07:09] Speaker 03:
And that's very consistent with Vittone.

[00:07:11] Speaker 03:
How do you read on page 239 of the appendix, he has that block quote from Vittone about, depending on the state of charge of the batteries, how do you read that text that is you're relying on there?

[00:07:27] Speaker 00:
So I read that in two ways.

[00:07:28] Speaker 00:
Number one, that says nothing about how we accomplish

[00:07:32] Speaker 00:
how we solve this problem.

[00:07:34] Speaker 00:
It doesn't tell us how we overcome the depleted state of charge of the batteries.

[00:07:37] Speaker 00:
And again, if you look at the 970 patent teaching, what it says is the way you deal with this is you just allocate more torque from the engine and less from the motor and have the engine running at a high level at all times.

[00:07:49] Speaker 00:
So that would be a completely alternative pathway to solving the problem that he has here.

[00:07:53] Speaker 00:
But more importantly, when we asked him about this, he said this has nothing to do with managing emissions.

[00:07:59] Speaker 00:
nothing absolutely to do with claim three.

[00:08:02] Speaker 00:
He was as explicit as he can be.

[00:08:03] Speaker 00:
And there's been a little bit of debate in the briefing about whether or not we were being fair to Dr. Stein.

[00:08:09] Speaker 00:
But we asked him as point blank as we possibly could about this.

[00:08:13] Speaker 00:
And that's it.

[00:08:16] Speaker 03:
So just to make sure I understand correctly, you're saying that this block quote that I'm referring to here, that it just says that depending on the state of the charge of the batteries, you're going to do something about how you're going to run the electric motor versus

[00:08:29] Speaker 03:
the mechanical motor.

[00:08:32] Speaker 03:
Correct.

[00:08:33] Speaker 03:
But it doesn't tell you how, and you think that the claim three is very different in the determination of how you're going to deal with that.

[00:08:40] Speaker 00:
Exactly.

[00:08:41] Speaker 00:
It sets forth a very explicit approach that we're going to adjust the thresholds on the limitation of torque.

[00:08:48] Speaker 00:
We're not going to allow the torque to change as rapidly as we might otherwise want to.

[00:08:52] Speaker 00:
And that is an approach, and we believe in the best approach, but the prior art shows us that there are many approaches.

[00:08:57] Speaker 00:
We all have vehicles where the torque

[00:08:59] Speaker 00:
is limited because the electronics do so to manage emissions.

[00:09:03] Speaker 00:
And the way most cars do it is they simply tell the driver, too bad, you're not going to accelerate as fast as you want to.

[00:09:09] Speaker 00:
And that's a perfectly viable approach here as well.

[00:09:12] Speaker 00:
When the state of charge of the battery is depleted, you simply tell the driver, sorry, you're not going to accelerate as quickly as you'd like.

[00:09:19] Speaker 00:
And that's a perfectly acceptable approach.

[00:09:23] Speaker 00:
So the problem with Dr. Stein's analysis is it leads to that conclusion.

[00:09:27] Speaker 00:
and says, well, it would have been obvious or it would have been there, but he's got to explain why.

[00:09:31] Speaker 00:
And the board acknowledges that his testimony about the paragraph in question in Appendix 239 was not about emissions.

[00:09:39] Speaker 00:
It's at page 13 of their opinion.

[00:09:42] Speaker 00:
They recognize that when he was asked about that particular paragraph, he was talking about the general operation of the vehicle, and it had nothing to do with emissions or Claim 3.

[00:09:52] Speaker 00:
We even asked him explicitly about Claim 3.

[00:09:56] Speaker 00:
So to the extent that he's relying on that, or the board is relying on it, they need to point to something.

[00:10:01] Speaker 00:
They've got to have some kind of substantial evidence.

[00:10:03] Speaker 00:
But I can go further.

[00:10:04] Speaker 00:
I can demonstrate that Dr. Stein's analysis of the Tony in the first appeal demonstrates that, in fact, it shows nothing about adjusting the threshold.

[00:10:15] Speaker 00:
If the court can bear with me for just a moment.

[00:10:18] Speaker 00:
And the court's opinion at pages eight and nine relied on Dr.

[00:10:23] Speaker 00:
Stein's analysis of the toning and the figure eight graph in particular showing that the slopes of the torque curve versus time were the same over and over again.

[00:10:36] Speaker 00:
And from that, Dr. Stein deduced that the rate of change of torque, the threshold for torque change, did not change.

[00:10:44] Speaker 00:
So he came to the opposite conclusion of what's required by claim three.

[00:10:48] Speaker 00:
And it was the linchpin of his analysis.

[00:10:50] Speaker 00:
It was the linchpin of what the board decided.

[00:10:53] Speaker 00:
that the way he reads Vittoni is that it absolutely does not change the threshold values for the rate of change of torque, where claim three requires that you do so.

[00:11:04] Speaker 00:
So in effect, his analysis shows that Vittoni is going the wrong way, that it shows that you do not change the rate of change thresholds of torque.

[00:11:16] Speaker 00:
And that's at, I think it's at page

[00:11:22] Speaker 00:
five of our reply brief, the gray brief, where we actually do that analysis in very explicit detail.

[00:11:52] Speaker 01:
I just want to address the first thing I'd like to address is my friend here said that the tone says nothing about engine control and we've already reached that issue in the first time around with claim one in which the board found that the tone does teach the threshold on the rate of change of torque and this court affirmed that so

[00:12:21] Speaker 01:
We do know that Vitone actually does teach engine control.

[00:12:28] Speaker 03:
Where is that in claim one?

[00:12:31] Speaker 01:
In claim one?

[00:12:32] Speaker 01:
So if you look at page six, you can see claim one.

[00:12:37] Speaker 01:
And at the very end of appendix page six, you can see the wherein rate of change of torque output of said engine is limited to a threshold value.

[00:12:47] Speaker 01:
And that was one of the issues the first time around.

[00:12:51] Speaker 01:
here on this appeal.

[00:12:53] Speaker 01:
And the board found, and relied a lot on Dr. Stein's testimony, that figure eight on page, I think it's 454 of the appendix, showed this threshold on the rate of change of torque through Vuitton's steady state management theory.

[00:13:20] Speaker 03:
What do you think figure five shows?

[00:13:23] Speaker 01:
So figure five, Dr. Stein did rely also on figure five.

[00:13:27] Speaker 01:
And what figure five shows is that in this hybrid control system, the battery state of charge, which is sort of on the bottom right of that image, factors into the battery management, which factors into the optimal power management

[00:13:49] Speaker 01:
which considers fuel consumption and emissions, which factors into the overall torque management.

[00:13:56] Speaker 01:
And that torque management is what determines the split between the combustion engine and the electric motors.

[00:14:04] Speaker 01:
And Dr. Sen relied on that in those paragraphs starting on page 238 of the appendix.

[00:14:15] Speaker 03:
Is my correct in understanding that

[00:14:19] Speaker 03:
part of Vittoni that talks at all about the state of the battery charge and how it factors in can be found in Vittoni at page 26, you know, this block paragraph we were talking about earlier and also this figure five, but that's pretty much about it that addresses it expressly in Vittoni or is there other disclosure that I should look at?

[00:14:41] Speaker 01:
Those are the two main disclosures that Dr. Stein did rely on.

[00:14:45] Speaker 01:
There's a little bit on appendix 450 that

[00:14:48] Speaker 01:
under at the bottom that talks a little bit in general about the management control strategies of the hybrid power train.

[00:14:56] Speaker 03:
Say on a 450, is it that under control system?

[00:15:00] Speaker 01:
It's under management strategies of the hybrid power train and it just talks a little bit about figure five and what it shows.

[00:15:09] Speaker 01:
It says the ECU, the electronic control unit, manages the power train on the basis of inputs including

[00:15:18] Speaker 01:
that list of inputs.

[00:15:20] Speaker 01:
So it was that page, depending on the state of charge passage that we've been discussing, and then on page 454, the figure five that shows the torque split with the battery state of charge as an input.

[00:15:42] Speaker 01:
So we discussed, just to go back over Dr. Stein's testimony,

[00:15:47] Speaker 01:
Starting on page 238, Dr. Stein gives us the pathway to go from what Vuitton discloses to his conclusion in paragraph 194.

[00:16:03] Speaker 01:
And what he says, starting on page 238, paragraph 190, is that a person of skill in the art would know that when the battery is low,

[00:16:18] Speaker 01:
the control system would need to limit the use of electrical loads, especially large ones like the electric traction motor.

[00:16:26] Speaker 01:
And so one of skill in the art would have expected to monitor the battery state of charge and modify its use accordingly.

[00:16:41] Speaker 03:
I'd also like to just... Paragraph 190.

[00:16:45] Speaker 03:
relate to the conclusion in paragraph 194?

[00:16:49] Speaker 01:
So in paragraph 190, Dr. Stein is discussing what a person of ordinary skill in the art would know.

[00:16:58] Speaker 01:
And the two important things that he states here is that when the battery is in a low state of charge, the control system will need to limit the use of electrical loads, and in particular, large loads.

[00:17:15] Speaker 01:
And the other statement he makes at the end of 190 is that person of ordinary skill would know to monitor the battery and modify the use of the battery accordingly.

[00:17:30] Speaker 01:
So that plays into his conclusion on appendix 240 at paragraph 194 because he says that

[00:17:41] Speaker 01:
Increasing the threshold value would be necessary under such a battery's state of charge conditions in order to meet the instantaneous torque requirements.

[00:17:51] Speaker 01:
So he's saying that the ECU determines the torque split and the battery's state of charge is a factor in there.

[00:18:05] Speaker 01:
And so one of Skill in the Art would know to monitor that.

[00:18:10] Speaker 01:
modify the torque accordingly.

[00:18:19] Speaker 01:
And if there are no further questions I will yield my time.

[00:18:27] Speaker 00:
So if I can just start with the sentence that counsel just read from paragraph 194 that it would be necessary to adjust the threshold in order to solve the depleted state of charge problem.

[00:18:40] Speaker 00:
That's the point of deficiency that Dr. Stein falls down on, because he has no support for that whatsoever.

[00:18:46] Speaker 00:
And the record shows that there are other approaches that could and have been used in the 970 patent, the Asani patent.

[00:18:53] Speaker 00:
I didn't mention that during my first argument, but in appendix 383 and 387, columns 365 through 459, the Asani reference shows that, in fact, the way they deal with this is, again, to run the engine at a very high power

[00:19:10] Speaker 00:
and either allocate it to the wheels or to the electric motor as needed.

[00:19:14] Speaker 00:
At that point, you never need to adjust any kind of a threshold.

[00:19:17] Speaker 00:
There is no discussion of threshold.

[00:19:19] Speaker 00:
It is not necessary.

[00:19:21] Speaker 00:
Dr. Stein has no evidence to support the statement that it is necessary to adjust those thresholds.

[00:19:27] Speaker 00:
If I can go back to the paragraph that we've been debating, it appears in native form at appendix 451.

[00:19:39] Speaker 00:
where it talks about, so it's quoted, I'm sorry, from Dr. Stein's declaration of appendix 239, the depending on the state of the charge of the batteries paragraph that we've been discussing over and over and over again.

[00:19:58] Speaker 00:
We find it again in its native form in appendix 451, depending on the state of the charge of the batteries.

[00:20:05] Speaker 00:
We asked him specifically about that paragraph.

[00:20:08] Speaker 00:
at appendix 2575 question as discussed in this paragraph that starts with depending on the state of the charge of the batteries and then it goes on from there.

[00:20:18] Speaker 00:
And then a question at appendix 2576.

[00:20:21] Speaker 00:
So this paragraph from Vittoni where it states the control system allows also to introduce only the electric traction.

[00:20:29] Speaker 00:
That's a continuation of the paragraph I just read.

[00:20:32] Speaker 00:
I believe you previously testified that it was your opinion that in this instance it was only the electric motor that was providing torque and not the engine.

[00:20:38] Speaker 00:
Is that correct?

[00:20:39] Speaker 00:
Answer, this refers to a particular part of the overall function and behavior of the hybrid vehicle.

[00:20:44] Speaker 00:
And it's talking about the effect of the battery charge on the possibility of running the vehicle in the electric mode only, you know, without the engine.

[00:20:52] Speaker 00:
That is not related to emission control issues that are talked about in the paragraph below where Vittoni talks about the steady state management

[00:21:01] Speaker 00:
of the thermal engine during transient phases where the torque is being split between the engine and the motor.

[00:21:06] Speaker 00:
So I don't think that's what he's describing up here under optimizing consumption and talking about the issue of going into electric mode based on the state of charge of the battery has anything to do at all with what is talked about below in, quote, to reduce emissions, close quote, claim three, claim 1.9.

[00:21:23] Speaker 03:
Can I ask you, I'm just curious, what's the timing of when he

[00:21:28] Speaker 03:
Submitted his declaration where he says that this paragraph is relevant to claim three and this Testimony that you've identified for us today.

[00:21:38] Speaker 00:
It was it was obviously removed by several months I can't I can't put exactly three as we know which one came first.

[00:21:43] Speaker 00:
I know the declaration The declaration goes in with the petition And we would be one thing if he could point to something but he's here.

[00:21:53] Speaker 00:
He's running away from it He's telling us that that paragraph is relating to whether or not you're gonna drive in electric mode

[00:21:58] Speaker 00:
That's what the paragraph in question at Appendix 239 is talking about.

[00:22:03] Speaker 03:
I can't remember whether the board actually addressed this or not in its opinion, did it?

[00:22:09] Speaker 00:
They did at page 13, and they seem to acknowledge that the paragraph in question does not apply to emissions.

[00:22:16] Speaker 00:
And then they say, well, but, you know, overall, and they kind of do a bit of a gloss there and say, overall, that we were able to find it someplace.

[00:22:24] Speaker 00:
And to me, it really brings us back to a remedy.

[00:22:27] Speaker 00:
You know, it is possible for an expert to fill in gaps.

[00:22:30] Speaker 00:
It is possible for them to find obviousness just in a broad sense, although again, I guess we have to be careful about that as well.

[00:22:41] Speaker 00:
But they've got to have something.

[00:22:42] Speaker 00:
I mean, this is a very particular solution.

[00:22:44] Speaker 00:
We're going to change the threshold on the rate of change of torque output.

[00:22:49] Speaker 00:
And it's only one of many available solutions to the state of charge problem.

[00:22:53] Speaker 00:
So he can't say that it's necessary.

[00:22:55] Speaker 00:
He can't say that it's inherent.

[00:22:57] Speaker 00:
He needs to have more.

[00:22:58] Speaker 00:
And just allowing him to give us an MCDixit, it's obvious, not only flies in the face of Arendy, but in Icon Fitness.

[00:23:08] Speaker 00:
And if I can throw one plug in for a reversal, and it was this court's opinion last Friday in the personal web case, it harkened back to Judge O'Malley's dissent in the Icon Fitness case, that the Patent Office has had two tries at this.

[00:23:23] Speaker 00:
I think it ought to be two strikes and you're out.

[00:23:25] Speaker 00:
approach.

[00:23:26] Speaker 00:
So if the court sees fit to side with pace in this, I'd ask for a reversal.