from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in Nos. IPR2015-00606, IPR2015-00758,
IPR2015-00785, IPR2015-00799, IPR2015-00801, IPR2015-00792.
B. Cordell, Fish & Richardson, PC, Washington, DC, argued
for appellants. Also represented by Timothy W. Riffe, Brian
James Livedalen, Daniel Tishman.
Gabriel Bell, Latham & Watkins LLP, Washington, DC,
argued for appellee. Also represented by Matthew J. Moore;
Frank A. Angileri, Sangeeta G. Shah, John P. Rondini, Andrew
B. Turner, Brooks Kushman PC, Southfield, MI.
Lourie, O'Malley, and Taranto, Circuit Judges.
O'Malley, Circuit Judge.
LLC and The Abell Foundation, Inc. (collectively,
"Paice") appeal from final written decisions in six
inter partes review ("IPR") proceedings,
in which the Patent Trial and Appeal Board
("Board") held certain challenged claims of U.S.
Patent Nos. 7, 237, 634 ("'634 patent") and 8,
214, 097 ("'097 patent")
unpatentable. For the following reasons, we affirm in
part, vacate in part, and remand. In particular, we vacate
the Board's obviousness determinations as they relate to
the '634 patent's "electrical" claims and
remand for the Board to determine whether those claims find
written description support in the priority applications and
the references incorporated therein. We affirm the
Board's obviousness determinations as to all other
'634 and '097 Patents
subject matter of the '634 and '097 patents has been
discussed in considerable detail in previous decisions of
this court. See Paice LLC v. Ford Motor Co., 681
Fed.Appx. 885, 887-88 (Fed. Cir. 2017) (Paice I)
(involving related patent); Paice LLC v. Ford Motor
Co., 681 Fed.Appx. 904, 908 (Fed. Cir. 2017) (Paice
II) (involving related patent); Paice LLC v. Ford
Motor Co., 685 Fed.Appx. 940, 943 (Fed. Cir. 2017)
(Paice III) (involving '097 patent); see
also Paice LLC v. Ford Motor Co., 685 Fed.Appx. 950
(Fed. Cir. 2017) (Paice IV) (summary affirmance of
Board decision involving the '634 patent). We recite here
only the background necessary to resolve the issues on
related '634 and '097 patents, both titled
"Hybrid Vehicles, " are directed to a torque-based
algorithm for selecting operating modes in a hybrid vehicle
having an internal combustion engine and one or more battery-
powered electric motors. The claims at issue generally recite
methods for comparing the instantaneous torque required to
propel the vehicle, which the patents refer to as "road
load" ("RL"), to both a setpoint
("SP") and the engine's maximum torque output
("MTO") to determine whether to operate the engine,
the electric motor, or both. '634 patent, col. 3, ll.
12-21; id. col. 13, ll. 12-29, 44-65; id.
col. 41, l. 4 through col. 43, l. 25 & Fig. 9. Claim 241
of the '634 patent is representative and recites:
241. A method for controlling a hybrid vehicle, comprising:
determining instantaneous road load (RL) required to propel
the hybrid vehicle responsive to an operator command;
operating at least one electric motor to propel the hybrid
vehicle when the RL required to do so is less than a setpoint
operating an internal combustion engine of the hybrid vehicle
to propel the hybrid vehicle when the RL required to do so is
between the SP and a maximum torque output (MTO) of the
engine, wherein the engine is operable to efficiently produce
torque above the SP, and wherein the SP is substantially less
than the MTO; and
operating both the at least one electric motor and the engine
to propel the hybrid vehicle when the torque RL required to
do so is more than the MTO;
controlling said engine such that combustion of fuel within
the engine occurs substantially at a stoichiometric ratio,
wherein said controlling the engine comprises limiting a rate
of change of torque output of the engine; and
if the engine is incapable of supplying instantaneous torque
required to propel the hybrid vehicle, supplying additional
torque from the at least one electric motor.
Id. col. 81, ll. 33-58.
issue are claims that recite limitations related to the
voltage and current output of the electric motor's
battery. Claim 245, for example, recites a voltage output
requirement of "at least approximately 500 volts":
245. The method of claim 241,
wherein said operating the at least one electric motor
comprises supplying energy from a battery;
wherein a maximum DC voltage supplied from said battery is
at least approximately 500 volts.
Id. col. 82, ll. 1-5 (emphasis added). These
"electrical" claims first appeared in a
continuation-in-part application filed on April 2, 2001. The
'634 patent is a divisional of a divisional of that
several claims of the '634 patent require operating the
engine at torque output levels less than the setpoint
"under abnormal and transient conditions." Claim
265, for example, recites:
265. The method of claim 241, further comprising:
operating the engine at torque output levels less than the SP
under abnormal and transient conditions to satisfy
drivability and/or safety considerations.
Id. col. 83, ll. 51-54 (emphasis added). Claims 7,
17, 27, and 37 of the '097 patent also recite this
"abnormal and transient conditions" limitation.
Overview of the Prior Art
Board's unpatentability determinations are based on two
primary references: (1) U.S. Patent No. 5, 343, 970 to
Severinsky ("Severinsky"), and (2) PCT Application
Publication WO 00/15455 ("'455 PCT
publication"). We briefly describe these references
which issued to a co-inventor of the '634 and '097
patents, describes a control strategy for selecting operation
modes in a hybrid vehicle. Severinsky teaches that its
vehicle's internal combustion engine is used only near
"its most efficient operational point, " which
Severinsky defines as when the engine "produces 60-90%
of its maximum torque." Severinsky, col. 20, ll. 63-67.
Sever-insky also describes circumstances in which it is
efficient to use the engine (such as "in highway
cruising"), other circumstances in which it is more
efficient to use an electric motor (such as "in
traffic"), and still other circumstances in which torque
is supplied by both the electric motor and the engine (such
as in "acceleration/hill climbing mode").
Id. col. 6, l. 63 through col. 7, l. 16; see
also id. col. 14, ll. 15-18; id. col. 22, ll.
previously considered Severinsky in two appeals from IPR
proceedings involving Paice's hybrid vehicle patents.
See Paice II, 681 Fed.Appx. 904; Paice III,
685 Fed.Appx. 940. In those cases, we affirmed the
Board's determinations that Severinsky, in combination