Paice LLC v. Ford Motor Company
685 F. App'x 940
Fed. Cir.2017Background
- Paice (and The Abell Foundation) own U.S. Patent No. 8,214,097 claiming a hybrid-vehicle control strategy that (1) selects engine vs. motor propulsion based on torque requirements and (2) limits the engine’s rate of increase of output torque to maintain substantially stoichiometric combustion.
- Ford petitioned two inter partes reviews (IPRs). The PTAB found many claims of the ’097 patent obvious in two decisions (IPR2014-01415 and IPR2014-00570).
- Paice appealed, arguing (a) the PTAB mis-construed claim terms (notably “setpoint”) and (b) the PTAB’s factual findings supporting obviousness lacked substantial evidence.
- The Federal Circuit reviewed claim construction de novo (broadest-reasonable-interpretation applied at PTAB) and reviewed obviousness legal conclusion de novo with underlying facts for substantial-evidence.
- Key prior art at issue: Severinsky (earlier patent by the same inventor), Anderson (technical paper on hybrid-control strategies), Takaoka, Yamaguchi, and Katsuno.
Issues
| Issue | Plaintiff's Argument (Paice) | Defendant's Argument (Ford) | Held |
|---|---|---|---|
| Construction of “setpoint” | Setpoint implies a particular coordinated, simultaneous control threshold | PTAB: setpoint means a predetermined torque value that may be reset | Court: Affirmed PTAB’s construction as reasonable under BRI |
| Requirement of simultaneous/coordinated control of engine and motor | Claims require coordinated simultaneous control (controller limits engine torque rate while motor supplies shortfall) | Claims are written as separate steps; prior art need not show simultaneity | Court: Claims do not require simultaneity; PTAB permissibly read steps as separate |
| Obviousness based on Severinsky + Anderson (motivation and operability) | No motivation to combine; Anderson’s slow-transient teachings apply only to series hybrids so combination wouldn’t work | Both references aim to reduce emissions; a skilled artisan would combine them to maintain stoichiometric combustion and slow transients; Anderson’s teachings can be applied broadly | Court: Substantial evidence supports PTAB’s finding of motivation to combine and that combination would work; affirmed obviousness |
| Dependent limitations re: engine preheating and fuel:air ratio for starting (Yamaguchi, Takaoka, Katsuno) | References don’t disclose required starting-temperature or specified fuel:air ratios | PTAB credited expert testimony and reference disclosures showing preheating/starting control and air:fuel (lambda) values correlating to required fuel:air ratios | Court: Substantial evidence supports PTAB’s findings; affirmed unpatentability of dependent claims |
Key Cases Cited
- D’Agostino v. MasterCard Int’l Inc., 844 F.3d 945 (Fed. Cir.) (standard of review for PTAB claim construction under BRI)
- Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir.) (review standard: obviousness legal conclusion de novo, facts for substantial evidence)
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir.) (enumeration of factual findings underlying obviousness)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (U.S.) (motivation-to-combine analysis for obviousness)