Paice LLC v. Ford Motor Company
681 F. App'x 904
| Fed. Cir. | 2017Background
- Paice sued Ford alleging infringement of U.S. Patent No. 7,104,347, which claims hybrid-vehicle control strategies that start/operate an internal combustion engine when required torque meets or exceeds a torque-based "setpoint" (SP) and use electric motors/battery otherwise.
- Ford petitioned for multiple inter partes reviews (IPRs) targeting various claims of the ’347 patent; the PTAB invalidated claims in three final written decisions (IPR2014-884, -571, -579). Paice appealed those decisions to the Federal Circuit.
- Key disputed claim terms were “setpoint” (SP) and “road load” (RL). The Board construed SP as a "predetermined torque value that may or may not be reset" and RL as "instantaneous torque required to propel the vehicle, positive or negative."
- The PTAB found claims obvious in view of prior art references (Caraceni; Severinsky; combinations with Ehsani; and a set of Bumby articles), relying on expert testimony and intrinsic evidence; Board also used a limited “common sense” rationale where appropriate.
- The Federal Circuit reviewed claim construction de novo and factual findings for substantial evidence, affirmed the Board’s constructions and most obviousness findings, but Judge Stoll partially dissented as to Severinsky-based conclusions about certain battery-charging limitations.
Issues
| Issue | Paice's Argument | Ford's Argument | Held |
|---|---|---|---|
| Construction of "setpoint" | SP should be defined by its function: a trigger for transitions between operating modes | SP is a torque value; transitions are dictated by claim structure and need not be read into the term | Affirmed: SP = "predetermined torque value that may or may not be reset"; no added trigger requirement in definition |
| Construction of "road load" | Road load must be more than accelerator input; cannot be equated to pedal position alone | Road load = instantaneous torque demand; patent ties pedal position to road load and prior art uses pedal-based torque demand | Affirmed: RL = instantaneous torque required to propel the vehicle (positive or negative); application to prior art reviewed for substantial evidence |
| Caraceni obviousness (claims 1,7,10) | Caraceni lacks torque-based SP startup, a battery supplying both motors, and a proper RL comparison | Caraceni’s VMU in hybrid mode implements an automatic torque-based threshold (setpoint); only one battery is disclosed (traction battery) so starter would be connected; expert testimony supports these inferences | Affirmed: substantial evidence supports Board that Caraceni discloses torque-based SP activation, traction battery use, and RL comparison |
| Severinsky / Severinsky+Ehsani obviousness (claims including 23,36,9,1,6,7,15,21) | Severinsky uses speed rather than torque/RL; does not teach using RL vs SP for mode/charging decisions or the claimed low-speed battery-charging mode | Severinsky teaches operating the ICE near high-efficiency torque ranges and contemplates torque-based mode/charging decisions; expert testimony supports reading RL/SP functionality | Affirmed generally: substantial evidence supports Board’s findings that Severinsky teaches torque-based mode and battery-charging logic; dissent (Judge Stoll) argues insufficient evidence for certain claims (9,23,36) regarding specific battery-charging limitation |
| Bumby references combination (claims 1,7,8,18,21,23,37) | Bumby refs are disparate; Board impermissibly cherry-picked incompatible embodiments; lack of motivation to combine | Bumby papers chronicle an evolving project; thesis and expert testimony show predictable variation and motivation to combine optimal/suboptimal control teachings | Affirmed: Board had substantial evidence of motivation to combine and that Bumby teachings disclose claimed limitations |
Key Cases Cited
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (PTAB applies broadest reasonable construction in IPRs)
- Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) (review standards: de novo for ultimate obviousness, substantial evidence for facts)
- Merck & Cie v. Gnosis S.P.A., 808 F.3d 829 (Fed. Cir. 2015) (Graham factual inquiries for obviousness)
- Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) (Board may rely on common sense if adequately explained and supported)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness and predictable variation principles)
- Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009) (combining adjacent embodiments and predictable variations)
- Consol. Edison Co. v. NLRB, 305 U.S. 197 (1938) (definition of substantial evidence)