Paice LLC v. Ford Motor Company

NOTE: This disposition is nonprecedential.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