Paice LLC v. Ford Motor Company
681 F. App'x 885
| Fed. Cir. | 2017Background
- Paice sued Ford alleging infringement of U.S. Patent No. 7,559,388 covering a hybrid-vehicle control strategy that limits engine torque-rate changes and uses electric motor support when road-load changes exceed a threshold.
- The ’388 patent defines "road load" as the vehicle's instantaneous torque demand; operation modes include electric-only, engine-only, and hybrid (motor supplements engine above engine MTO).
- The Patent Trial and Appeal Board (PTAB) instituted IPR and found claims 1–4, 6, 12, and 19 obvious over combinations using Vittone (for the rate-of-change/ motor-support features) plus Ehsani, Kawakatsu, or other references for remaining limitations; dependent claims 2, 6, 12 were tied to additional references; claim 3 was not separately analyzed by the Board.
- Paice appealed, arguing (a) Vittone does not disclose ‘‘road load’’ or the claimed torque-rate-limiting plus motor-support limitation, (b) lack of motivation to combine Vittone with Ehsani or Kawakatsu, and (c) errors in the Board’s treatment of dependent claims.
- The Federal Circuit reviewed the Board’s factual findings for substantial evidence and obviousness de novo; it affirmed invalidity of most claims but vacated the Board’s decision as to dependent claim 3 for lack of a separate analysis and remanded.
Issues
| Issue | Plaintiff's Argument (Paice) | Defendant's Argument (Ford) | Held |
|---|---|---|---|
| Whether Vittone discloses "road load" (instantaneous torque demand) | Vittone uses accelerator-pedal position only and thus does not capture external factors that define road load | Vittone’s "driveability torque requirement"/"total traction torque" corresponds to instantaneous torque demand; expert testimony supports equivalence | Affirmed: substantial evidence supports that Vittone discloses road load |
| Whether Vittone discloses limiting engine torque-rate to a threshold and using motor support when road-load rate exceeds it | Figure 8 is illustrative, not precise; Vittone’s "steady state" is too vague to supply the claimed threshold-plus-motor-control limitation | Vittone’s text and Fig. 8 show ‘‘steady state’’ management in transients with motor torque assuring demanded torque; expert evidence supports interpreting this as a rate-limit/threshold with motor support | Affirmed: substantial evidence supports that Vittone discloses the limitation |
| Whether a person of ordinary skill would be motivated to combine Vittone with Ehsani or Kawakatsu | Architectures/control goals differ (e.g., constant-power vs. torque-limited control); combination is not obvious or compatible | Both references aim to reduce emissions; substituting Vittone’s steady-state control into another system is a straightforward improvement; expert testimony supports motivation to combine | Affirmed: substantial evidence supports motivation to combine with both Ehsani and Kawakatsu |
| Validity of dependent claims 2, 6, 12 (and analysis of claim 3) | Claim-specific challenges: e.g., Caraceni does not disclose % per revolution for claim 2; architecture/ motor-type differences for claim 6; preheat differences for claim 12; claim 3 requires varying threshold by battery SOC | Board relied on expert conversions and testimony showing disclosures render dependent claims obvious; but Board failed to analyze claim 3 separately | Affirmed as to claims 2, 6, 12 (substantial evidence supports obviousness); vacated and remanded as to claim 3 because Board did not address its limitation and record lacks reasoned findings |
Key Cases Cited
- Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir.) (review: obviousness de novo; facts for substantial-evidence review)
- Consolidated Edison Co. v. NLRB, 305 U.S. 197 (U.S. 1938) (definition of substantial evidence)
- Merck & Cie v. Gnosis S.P.A., 808 F.3d 829 (Fed. Cir.) (factors underlying obviousness inquiry)
- Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir.) (agency must provide record and reasoning to allow judicial review)
- In re Lee, 277 F.3d 1338 (Fed. Cir.) (same principle on requirement for agency reasoning)
Outcome: Affirmed-in-part (claims 1, 2, 4, 6, 12, 19 invalid as obvious), Vacated-in-part and remanded (claim 3).