Toyota Motor Corporation v. General Electric Company

1. Case Identification

• Case #: IPR2019-00017
• Patent #: 9,821,668
• Filed: October 31, 2018
• Petitioner(s): Toyota Motor Corporation
• Patent Owner(s): General Electric Company
• Challenged Claims: 1-15

2. Patent Overview

• Title: Energy Storage and Management Systems
• Brief Description: The ’668 patent discloses an energy storage and management system (ESMS), particularly for electric or hybrid vehicles. The system uses a controller to receive sensor feedback from multiple energy storage devices (e.g., high-voltage batteries, low-voltage batteries, ultracapacitors) and a charging source to optimize charging, manage power distribution, and account for the operational lifespan of the components.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mitsutani - Claims 1 and 10 are obvious over Mitsutani.

• Prior Art Relied Upon: Mitsutani (Application # 2011/0101915).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mitsutani, which teaches an ESMS for hybrid vehicles, discloses every element of independent claims 1 and 10. Mitsutani’s system includes multiple power storage devices (10-1 to 10-3), a charger (42), DC electrical conversion devices (converters 12-1, 12-2), and switching devices (relays 11-1 to 11-3). It also features a distributed controller (comprising several ECUs) that receives sensor feedback from the storage devices (voltage/current sensors) and the charging source, compares this data to determine charging needs, and controls the system accordingly. For claim 10, Mitsutani inherently discloses a vehicle propulsion system with an electric motor, and its converters and relays function as the claimed "buck-boost converters" and "contactors."
  • Motivation to Combine (for §103 grounds): Although this is a single-reference ground, Petitioner contended that if Mitsutani's distributed controller is not considered a single "controller," it would have been obvious for a person of ordinary skill in the art (POSA) to consolidate the distributed ECUs into a single device. A POSA would combine them to reduce cost and complexity and improve reliability, which are predictable design goals.
  • Expectation of Success (for §103 grounds): A POSA would have had a high expectation of success in consolidating controller functions, as it was a well-known design choice with predictable results.

Ground 2: Obviousness over Mitsutani and Robinson - Claim 2 is obvious over Mitsutani in view of Robinson.

• Prior Art Relied Upon: Mitsutani (Application # 2011/0101915) and Robinson (Application # 2011/0006603).
• Core Argument for this Ground:
  • Prior Art Mapping: Claim 2 depends from claim 1 and adds the limitation of a "third buck-boost module." While Mitsutani discloses two such modules (converters 12-1 and 12-2), it does not explicitly disclose a third. Robinson teaches a flexible, portable power manager with multiple power converters that can include DC-to-DC buck and boost converters, demonstrating the utility of a multi-converter architecture.
  • Motivation to Combine (for §103 grounds): A POSA would combine the teachings of Mitsutani and Robinson to improve the flexibility and efficiency of Mitsutani’s system. In Mitsutani, a single converter (12-2) is shared between two power storage devices (10-2 and 10-3), preventing their simultaneous charging. A POSA would have been motivated to add a third converter, as suggested by Robinson's architecture, to provide a dedicated charging path for each device, thereby enabling independent and simultaneous charging.
  • Expectation of Success (for §103 grounds): Incorporating a third converter would be a straightforward modification that essentially duplicates existing functionality, leading to a high expectation of success.

Ground 3: Obviousness over Mitsutani, Robinson, and Gale - Claims 3-9 and 11-15 are obvious over Mitsutani in view of Robinson and Gale.

• Prior Art Relied Upon: Mitsutani (Application # 2011/0101915), Robinson (Application # 2011/0006603), and Gale (Application # 2012/0280646).
• Core Argument for this Ground:
  • Prior Art Mapping: This combination builds on the first two grounds, adding Gale to teach features recited in the remaining dependent claims. Gale discloses a vehicle charging system that explicitly includes distinct high-voltage (e.g., traction battery) and low-voltage (e.g., +12V auxiliary battery) loads and batteries. This maps directly to limitations in claims 3 and 11 requiring high-voltage and low-voltage storage devices. Further, Robinson teaches obtaining "operating limits" (e.g., operating voltage, charging current) from connected devices and using a controller to determine a "power split" to allocate available power, mapping to limitations in claims 4-9 and 13-15. Finally, Mitsutani teaches a "large-capacitance capacitor," which a POSA would understand to be the "ultracapacitor" recited in claim 11.
  • Motivation to Combine (for §103 grounds): A POSA would combine these references because it was a known and advantageous practice in hybrid vehicles to use separate high-voltage and low-voltage batteries for different tasks (e.g., propulsion vs. accessories). A POSA would modify the Mitsutani/Robinson system with Gale's explicit teaching of this arrangement to improve efficiency and reduce cost. It would also be obvious to incorporate Robinson's sophisticated power allocation logic to manage charging between these different device types.
  • Expectation of Success (for §103 grounds): A POSA would have a reasonable expectation of success in combining these known elements—a multi-converter architecture, distinct high/low voltage batteries, and dynamic power splitting—to create the claimed system.

4. Key Claim Construction Positions

• Petitioner argued that the term "coupleable" should be construed to mean "capable of being or configured to be coupled." This construction was adopted from the definition the Patent Owner provided to the Examiner during the original prosecution of the ’668 patent to overcome an indefiniteness rejection. Petitioner's adoption of this construction is central to its argument that the prior art’s components are configured in a way that satisfies the claim limitations.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. § 325(d). It asserted that its proposed grounds of unpatentability were not cumulative of issues previously considered by the USPTO. Specifically, Petitioner noted that the primary references, Mitsutani and Robinson, were not before the Examiner during prosecution of the ’668 patent. Therefore, the combinations and arguments presented in the petition were new.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review of claims 1-15 of the ’668 patent and issue a final written decision canceling those claims as unpatentable.