Paice LLC v. Ford Motor Company

681 F. App'x 904
CourtCourt of Appeals for the Federal Circuit
DecidedMarch 7, 2017
Docket2016-1412; 2016-1415; 2016-1745
StatusUnpublished
Cited by5 cases

This text of 681 F. App'x 904 (Paice LLC v. Ford Motor Company) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Paice LLC v. Ford Motor Company, 681 F. App'x 904 (Fed. Cir. 2017).

Opinions

Opinion dissenting-in-part filed by

Circuit Judge Stoll.

[908]*908Per Curiam.

This is an appeal from final written decisions by the Patent Trial and Appeal Board in three inter partes review proceedings that invalidated various claims of Paice’s patent relating to hybrid vehicle control strategies. Paice contends that the Board misconstrued two claim terms and lacked substantial evidence to support its obviousness findings. We disagree with Pa-ice and affirm the Board’s decisions.

Background

In early 2014, Paice LLC and the Abell Foundation (collectively, “Paice”) sued Ford Motor Company for infringement of several patents covering hybrid vehicle technology, including U.S. Patent No. 7,104,347. Hybrid cars, in general, contain both a gas-powered engine and one or more battery-powered electric motors that can be used in isolation or in tandem to propel the car. The ’347 patent teaches a vehicle control strategy to reduce emissions that operates the engine only when it is efficient to do so and uses the motor to propel the vehicle in scenarios where the engine cannot operate efficiently. The efficient range for engine operation is determined, in part, based on the vehicle’s instantaneous torque demands, or road load (“RL”). ’347 patent col. 19 11. 54-56, col. 12 11. 38-43. Typically, this efficient range occurs when the vehicle’s road load is a substantial percentage of the engine’s maximum torque output (“MTO”), i.e., when the torque demand is greater than 30% of MTO. Id. at col. 20 11. 52-60, col. 13 11. 60-61.

The ’347 patent teaches that the vehicle can operate in multiple different modes depending on its instantaneous torque requirements, the battery’s state of charge, and other opérating parameters. Id. at col. 19 11. 54-56, Three possible operating modes include: 1) an electric mode used during low-speed driving in which the required torque is provided to the wheels only by the motor, id. at col. 35 1. 66 - col. 36 1. 7; 2) an engine mode used during highway cruising where the engine alone provides the required torque, id. at col. 36 11. 23-39; and 3) a hybrid mode that is used when the torque required is above the engine’s MTO and the motor provides the additional torque above that provided by the engine, id. at col. 36 11. 40-46. Claim 1 is illustrative and recites:

1. A hybrid vehicle comprising:

an internal combustion engine cont-rollably coupled to road wheels of said vehicle;
a first electric motor connected to said engine [a]nd operable to start the engine responsive to a control signal;
a second electric motor connected to road wheels of said vehicle, and operable as a motor, to apply torque to said wheels to propel said vehicle, and as a generator, for accepting torque from at least said wheels for generating current;
a battery, for providing current to said motors and accepting charging current from at least said second motor; and
a controller for controlling the flow of electrical and mechanical power between said engine, first and second motors, and wheels,
wherein said controller starts and operates said engine when torque require[d] to be produced by said engine to propel the vehicle and/or to drive either one or both said electric motor(s) to charge said battery is at least equal to a setpoint (SP) above which said engine torque is efficiently produced, and wherein the torque produced by said engine when operated at said setpoint (SP) is substantially' [909]*909less than the maximum torque output (MTO) of said engine.

Id. at col. 5811.13-37 (emphasis added).

Following Paice’s assertion of its patents against Ford in the district court, Ford filed a series of inter partes review petitions, three of which were instituted for the ’347 patent: the 884, 571, and 579 petitions. The Board construed the terms “setpoint” and “road load” in all three decisions, but each of the petitions addressed different combinations of prior art references. For example, the 884 petition invalidated claims 1, 7, and 10 of the ’347 patent as obvious in light of the Caraceni reference. Ford Motor Co. v. Paice LLC, IPR2014-884, 2015 WL 8536739, at *12 (PTAB Dec. 10, 2015) (“884 Board Decision”). In the 571 petition, the Board concluded that the Severinsky reference rendered obvious claims 23 and 36 and found that claims 1, 6, 7, 9,15, and 21 would have been obvious over a combination of Seve-rinsky and the Ehsani reference. Ford Motor Co. v. Paice LLC, IPR2014-571, 2015 WL 5782084, at *13 (PTAB Sept. 28, 2015) (“571 Board Decision”). Finally, the Board found claims 1, 7, 8, 18, 21, 23, and 37 would have been obvious over the collective teachings of the Bumby references in the 579 petition, which was combined with the 571 petition on appeal to this court. Ford Motor Co. v. Paice LLC, IPR2014-579, 2015 WL 5782085, at *17 (PTAB Sept. 28, 2015) (“579 Board Decision”).

Paice appeals from the Board’s final written decisions in all three petitions. We have jurisdiction pursuant to 35 U.S.C. § 141(a) and 28 U.S.C. § 1295(a)(4)(A).

Discussion

Paice raises four main arguments on appeal. First, Paice asserts that the Board improperly construed “setpoint” and “road load” in the ’347 patent. Second, Paice faults the Board for concluding that Cara-ceni teaches certain disputed limitations of claims 1, 7, and 10. Paice next argues that the Board erred in concluding that Seve-rinsky renders obvious claims 23 and 36 and that Severinsky in combination with Ehsani renders obvious claims 1, 6, 7, 9, 15, and 21. Finally, Paice challenges the Board’s conclusion that a POSA would have been motivated to combine the Bum-by references and that they teach the limitations of claims 1, 7, 8, 18, 21, 23, and 37.

A claim is unpatentable as obvious “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103.1 We review the Board’s ultimate obviousness determination de novo and underlying factual findings for substantial evidence. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). Substantial evidence “means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938). Factual findings underlying the obviousness inquiry include the scope and content of the prior art, the differences between the prior art and the claimed invention, whether there is a motivation to combine prior art references, the level of ordinary skill in the art, and relevant secondary considerations. Merck & Cie v. Gnosis S.P.A.,

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