Ford Motor Co v. Paice LLC

1. Case Identification

• Case #: IPR2015-00790
• Patent #: 7,237,634
• Filed: February 23, 2015
• Petitioner(s): Ford Motor Company
• Patent Owner(s): Paice LLC & Abell Foundation, Inc.
• Challenged Claims: 4, 13-15, 25, 28, 29, 32, 67, and 79

2. Patent Overview

• Title: Hybrid Vehicles
• Brief Description: The ’634 patent discloses a hybrid electric vehicle with a two-motor "series-parallel" topology. The patent focuses on a control strategy that operates the internal combustion engine only under conditions of high efficiency, using different operating modes based on the vehicle's instantaneous torque demands, a calculated road load, and a predetermined engine torque setpoint.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ibaraki and Yamaguchi - Claims 4 and 28 are obvious over Ibaraki in view of Yamaguchi.

• Prior Art Relied Upon: Ibaraki (Patent 5,789,882) and Yamaguchi (Patent 5,865,263).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ibaraki ’882 teaches the foundational hybrid vehicle of independent claim 1, including a controller and a two-motor system comprising a main traction motor and a separate generator (the claimed "first electric motor") coupled to the engine. Claims 4 and 28 add the limitation that the controller is operable to start the engine using this first electric motor.
  • Motivation to Combine: A POSITA would combine the teachings because Yamaguchi ’263 explicitly discloses using a generator-motor to start the engine. Petitioner asserted this was a well-known technique to improve durability over traditional starters, reduce cost and weight by eliminating a separate component, and provide a smoother engine start. Given that hybrid vehicles like Ibaraki's frequently start and stop the engine, a POSITA would have been motivated to incorporate this known, superior starting method to improve the overall system.
  • Expectation of Success: Integrating a known motor-starting function from Yamaguchi into the generator of Ibaraki's controller-based system was a predictable design choice with a high expectation of success.

Ground 2: Obviousness over Ibaraki and Vittone - Claim 29 is obvious over Ibaraki in view of Vittone.

• Prior Art Relied Upon: Ibaraki (Patent 5,789,882) and Vittone (Fiat Conceptual Approach to Hybrid Cars Design, Dec. 1994).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that claim 29 requires two main functions: limiting the rate of change of engine torque to maintain a stoichiometric fuel ratio for reduced emissions, and using the electric motor(s) to supply any resulting torque shortfall to maintain drivability. While Ibaraki ’882 does not explicitly disclose this strategy, its stated goal is to reduce emissions, making stoichiometric control a known objective for a POSITA.
  • Motivation to Combine: Vittone was cited for expressly teaching this exact control strategy for a hybrid vehicle. It discloses maintaining "stoichiometric control over the whole working range" during transient conditions by managing the engine's torque output and using an electric motor to compensate for torque demand. A POSITA would have been motivated to apply Vittone's specific, known emission-reduction strategy to Ibaraki's hybrid system to further Ibaraki’s stated goals of improving fuel efficiency and reducing emissions.
  • Expectation of Success: The combination would have been predictable because Vittone teaches that implementing this control strategy involves a software modification to the electronic control unit, which would be a straightforward task for a POSITA working with Ibaraki's controller-based system.

Ground 3: Obviousness over Ibaraki and Ibaraki '626 - Claim 32 is obvious over Ibaraki in view of Ibaraki '626.

• Prior Art Relied Upon: Ibaraki (Patent 5,789,882) and Ibaraki (Patent 6,003,626).

• Core Argument for this Ground:

  • Prior Art Mapping: Claim 32 recites starting and operating the engine at torque levels less than the normal setpoint (SP) under "abnormal and transient conditions" to satisfy drivability or safety. Petitioner argued this describes a fault-mode operation, such as in the event of an electric motor failure, where the engine must take over propulsion even in operating ranges normally handled by the motor.
  • Motivation to Combine: The Ibaraki ’626 patent, from the same assignee with overlapping inventors and a nearly identical control map, explicitly discloses a "special control routine" for exactly this scenario. If the electric motor fails, Ibaraki ’626 teaches that the engine is started and operated to meet all torque demands, including those below the normal setpoint, to ensure the vehicle remains safely operable. A POSITA would have been motivated to incorporate this essential safety feature from Ibaraki ’626 into the otherwise identical system of Ibaraki ’882.
  • Expectation of Success: Success was expected because the control systems in both Ibaraki references are virtually identical, making the integration of the fault-mode logic a predictable and necessary improvement for vehicle safety.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including over Ibaraki ’882 in view of Masding/Bumby 1988 (for specific torque percentage limitations), Kawakatsu ’429 (for relative engine/motor torque capabilities), and Suga ’104 (for motor power sufficient to meet the Federal urban driving cycle).

4. Key Claim Construction Positions

• "setpoint (SP)": Petitioner proposed the construction "a predetermined torque value." This construction was argued to be critical for comparing the claimed threshold to specific torque values disclosed in the prior art efficiency maps. Petitioner contended that broader constructions, such as those adopted in district court, were improper for IPR proceedings.
• "abnormal and transient conditions": For purposes of the IPR, Petitioner construed this term as "comprising starting and stopping of the engine and provision of torque to satisfy drivability or safety considerations." This construction was based on language from a claim in the parent ’347 patent and was central to the argument that this limitation describes a fault-tolerance mode, as taught by Ibaraki ’626.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 4, 13-15, 25, 28, 29, 32, 67, and 79 of the ’634 patent as unpatentable under 35 U.S.C. §103.