Ford Motor Co v. Paice LLC

1. Case Identification

• Case #: IPR2014-00571
• Patent #: 7,104,347
• Filed: April 4, 2014
• Petitioner(s): Ford Motor Company
• Patent Owner(s): Paice LLC & Abell Foundation, Inc.
• Challenged Claims: 1, 6, 7, 9, 15, 21, 23, and 36

2. Patent Overview

• Title: Hybrid Vehicles
• Brief Description: The ’347 patent discloses a hybrid electric vehicle and control strategies for operating it. The purported improvement is a control system that operates the internal combustion engine only under conditions of significant load to ensure high efficiency, using a setpoint (SP) to determine when engine operation is efficient.

3. Grounds for Unpatentability

Ground 1: Obviousness over Severinsky - Claims 23 and 36 are obvious over Severinsky (’970 patent) in view of the General Knowledge of a POSA.

• Prior Art Relied Upon: Severinsky (Patent 5,343,970) and the general knowledge of a Person of Ordinary Skill in the Art (POSA).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that claim 23 recites a method for controlling a one-motor hybrid system, which is precisely what Severinsky discloses. The ’347 patent itself allegedly admits that its control strategy is the same as that shown in Severinsky. Severinsky was argued to teach all limitations of independent claim 23, including: an engine capable of efficient operation between a lower setpoint (SP) and a maximum torque output (MTO); determining the required torque (RL); and employing different operating modes based on the required torque relative to the SP and MTO (motor-only, engine-only, and engine-plus-motor assist). For dependent claim 36, Severinsky was alleged to teach regenerative charging when the engine's torque output exceeds the road load, when the road load is negative, or during braking.
  • Motivation to Combine: Petitioner contended that Severinsky teaches all elements of the claims and that a POSA would have understood its teachings, such as interpreting a 60% torque value as a lower setpoint "substantially less than the MTO." No motivation to combine distinct references was needed, as the argument centered on Severinsky's comprehensive disclosure.
  • Expectation of Success: A POSA would have a high expectation of success in implementing the claimed method, as it was directly taught by Severinsky.

Ground 2: Obviousness over Severinsky and Ehsani - Claims 1, 6, 7, 9, 15, and 21 are obvious over Severinsky (’970 patent) in view of Ehsani (’613 patent) and the General Knowledge of a POSA.

• Prior Art Relied Upon: Severinsky (Patent 5,343,970) and Ehsani (Patent 5,586,613).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that claim 1 requires a two-motor hybrid architecture: a "first electric motor" to start the engine and a "second electric motor" for propulsion and generation. Severinsky discloses a single-motor system that performs all these functions. However, it was well known in the art to use a dedicated starter motor. Ehsani explicitly teaches a two-motor architecture with a generator that acts as a starter motor and a separate traction motor. Petitioner argued that Severinsky provides the fundamental torque-based control strategy, while Ehsani provides the obvious architectural modification of adding a dedicated starter motor.
  • Motivation to Combine: A POSA would combine Severinsky’s control strategy with Ehsani’s two-motor architecture to achieve predictable benefits. Ehsani taught that a dedicated starter motor allowed the engine to be started while disengaged from the drive wheels, reducing noise and vibration. It also enabled the battery to be charged during engine idle. These were known advantages that would motivate a POSA to modify Severinsky's one-motor design.
  • Expectation of Success: There was a high expectation of success, as the combination involved the simple substitution of a known element (a starter motor from Ehsani) into an existing system (Severinsky) to achieve a predictable result (engine starting and idle charging) without changing the fundamental control strategy.

Ground 3: Obviousness over Ehsani and Severinsky - Claims 1, 6, 7, 9, 15, and 21 are obvious over Ehsani (’613 patent) in view of Severinsky (’970 patent).

• Prior Art Relied Upon: Ehsani (Patent 5,586,613) and Severinsky (Patent 5,343,970).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground reverses the primary and secondary references from Ground 2. Petitioner argued that a POSA would start with Ehsani’s two-motor hybrid architecture, which uses a relatively simple control strategy (operating the engine at an average power level at all times). To improve upon this, the POSA would look to other known control strategies. Severinsky teaches an advanced, torque-based control strategy that operates the engine only in its most efficient range.
  • Motivation to Combine: A POSA would combine the references to improve the fuel efficiency of Ehsani’s system. Ehsani explicitly states that “other control techniques may also be used.” Severinsky’s strategy offered a significant improvement in fuel economy (200-300%) over conventional vehicles, an improvement of up to 20% over Ehsani’s disclosed efficiency. This clear performance benefit provided a strong motivation to apply Severinsky’s control logic to Ehsani’s vehicle architecture.
  • Expectation of Success: A POSA would have a high expectation of success in implementing Severinsky's control logic in Ehsani's hardware, as it was an application of a known, improved control method to a known vehicle platform to achieve the expected benefit of enhanced fuel economy.

4. Key Claim Construction Positions

• "setpoint (SP)" / "SP": Petitioner argued for a construction of "a predetermined torque value." This was based on amendments and arguments made during prosecution to overcome prior art, where the patentee defined the setpoint as being "substantially less than the maximum torque output (MTO)." This construction is narrower than a district court’s construction of "a definite, but potentially variable value at which a transition between operating modes may occur" and is critical to Petitioner's argument that Severinsky's disclosure of operating the engine at 60-90% of its maximum torque meets this limitation.
• "road load (RL)" and related terms: Petitioner adopted the construction from prior litigation: "the instantaneous torque required for propulsion of the vehicle, which may be positive or negative in value."
• Operating Modes ("low-load mode I," etc.): Petitioner agreed with constructions from prior litigation for the purposes of the IPR.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 6, 7, 9, 15, 21, 23, and 36 of the ’347 patent as unpatentable under 35 U.S.C. §103.