NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PAICE LLC, THE ABELL FOUNDATION, INC.,
Appellants
v.
FORD MOTOR COMPANY,
Appellee
______________________
2016-1412, 2016-1415
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2014-00571, IPR2014-00579.
-----------------------------------
PAICE LLC, THE ABELL FOUNDATION, INC.,
Appellants
v.
FORD MOTOR COMPANY,
Appellee
______________________
2016-1745
______________________
2 PAICE LLC v. FORD MOTOR COMPANY
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00884.
______________________
Decided: March 7, 2017
______________________
RUFFIN B. CORDELL, Fish & Richardson, PC, Washing-
ton, DC, argued for appellants. Also represented by
TIMOTHY W. RIFFE, LINDA KORDZIEL, DANIEL TISHMAN,
BRIAN JAMES LIVEDALEN.
MATTHEW J. MOORE, Latham & Watkins LLP, Wash-
ington, DC, argued for appellee. Also represented by
GABRIEL BELL; ANDREW B. TURNER, JOHN P. RONDINI,
FRANK A. ANGILERI, SANGEETA G. SHAH, Brooks Kushman
PC, Southfield, MI.
______________________
Before PROST, Chief Judge, SCHALL and STOLL,
Circuit Judges.
Opinion for the court filed PER CURIAM.
Opinion dissenting-in-part filed by Circuit Judge
STOLL.
PER 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 Paice and affirm
the Board’s decisions.
PAICE LLC v. FORD MOTOR COMPANY 3
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 emis-
sions 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 ll. 54–56, col. 12 ll. 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 ll. 52–
60, col. 13 ll. 60–61.
The ’347 patent teaches that the vehicle can operate
in multiple different modes depending on its instantane-
ous torque requirements, the battery’s state of charge,
and other operating parameters. Id. at col. 19 ll. 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 l. 66 – col. 36 l. 7; 2) an engine mode used during
highway cruising where the engine alone provides the
required torque, id. at col. 36 ll. 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
ll. 40–46. Claim 1 is illustrative and recites:
4 PAICE LLC v. FORD MOTOR COMPANY
1. A hybrid vehicle comprising:
an internal combustion engine controlla-
bly coupled to road wheels of said vehicle;
a first electric motor connected to said en-
gine [a]nd operable to start the engine respon-
sive to a control signal;
a second electric motor connected to road
wheels of said vehicle, and operable as a mo-
tor, to apply torque to said wheels to propel
said vehicle, and as a generator, for accepting
torque from at least said wheels for generat-
ing 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 elec-
trical and mechanical power between said en-
gine, first and second motors, and wheels,
wherein said controller starts and operates
said engine when torque require[d] to be pro-
duced 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 less than
the maximum torque output (MTO) of said
engine.
Id. at col. 58 ll. 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
PAICE LLC v. FORD MOTOR COMPANY 5
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 Severinsky and the Ehsani refer-
ence. 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 “set-
point” and “road load” in the ’347 patent. Second, Paice
faults the Board for concluding that Caraceni teaches
certain disputed limitations of claims 1, 7, and 10. Paice
next argues that the Board erred in concluding that
Severinsky 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 moti-
vated to combine the Bumby references and that they
teach the limitations of claims 1, 7, 8, 18, 21, 23, and 37.
6 PAICE LLC v. FORD MOTOR COMPANY
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 obvi-
ousness determination de novo and underlying factual
findings for substantial evidence. Harmonic Inc. v. Avid
Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). Sub-
stantial 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 (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 inven-
tion, 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., 808 F.3d 829, 833 (Fed. Cir. 2015), cert. denied,
137 S. Ct. 297 (2016).
I.
Paice first alleges that the Board erred by construing
the claim term “setpoint” as a “predetermined torque
value that may or may not be reset.” 884 Board Decision,
2015 WL 8536739, at *4. Paice asserts that the Board’s
construction misses the fundamental purpose of the
setpoint, which Paice claims is to trigger a transition
between operating modes, and that this purpose should be
included in the construction. We see no error in the
Board’s construction and decline to read a requirement
1 Given the effective filing date of the ’347 patent’s
claims, the version of 35 U.S.C. § 103 that applies here is
the one in force preceding the changes made by the Amer-
ica Invents Act. See Leahy–Smith America Invents Act,
Pub. L. No. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
PAICE LLC v. FORD MOTOR COMPANY 7
that the setpoint trigger a transition between operating
modes into the construction.
When construing claims, the Board must apply the
broadest reasonable construction in light of the patent’s
specification. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2142 (2016). “We review intrinsic evidence and the
ultimate construction of the claim de novo.” SightSound
Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir.
2015).
Like the Board, we start with the plain claim lan-
guage. Claim 1, for example requires the controller to
“start[] and operate[] said engine when torque require[d]
to be produced by said engine . . . is at least equal to a
setpoint (SP).” ’347 patent col. 58 ll. 29–33 (emphasis
added). This language equates the setpoint to a torque
value and makes clear that the transition requirement
Paice urges us to read into the meaning of “setpoint” is
included in the claim’s structure and need not be read into
the definition of setpoint. The claim itself calls for the
controller to start the engine, i.e., transition between
modes, when the torque required by the engine reaches a
setpoint, i.e., a “predetermined torque value that may or
may not be reset,” 884 Board Decision, 2015 WL 8536739,
at *4.
The specification and dependent claims demonstrate
that transitions can occur before a setpoint is reached, in
addition to not occurring despite reaching a setpoint,
which further bolsters our conclusion that this require-
ment should not be included in the term’s construction.
For example, the specification describes a scenario where
the driver rapidly depresses the accelerator pedal while in
low-speed operation—indicating an urgent need for full
power—which causes the engine to start “before the road
load reaches any particular setpoint SP.” ’347 patent
col. 41 ll. 14–19 (emphasis added). The specification also
teaches hysteresis in the mode-switching determination,
8 PAICE LLC v. FORD MOTOR COMPANY
meaning that a new mode might be entered “only after
the road load exceeded a first, lower setpoint SP for an
extended period of time.” Id. at col. 41 ll. 41–43 (emphasis
added). Similarly, several claims that depend from claim
1 show that a transition will only occur if the setpoint has
been maintained for a period of time. Claim 3 uses the
controller to effect a transition “only when RL>SP for at
least a predetermined time.” Id. at col. 58 ll. 41–46 (em-
phasis added). Claim 4 requires the controller to switch
from engine propulsion to motor propulsion but “only
when RL