Ford Motor Co v. Paice Corp

1. Case Identification

• Case #: IPR2015-00795
• Patent #: 7,104,347
• Filed: February 23, 2015
• Petitioner(s): Ford Motor Company
• Patent Owner(s): Paice LLC & Abell Foundation, Inc.
• Challenged Claims: 1-5, 14, 16, 19, 20, and 22

2. Patent Overview

• Title: Hybrid Vehicles
• Brief Description: The ’347 patent discloses a hybrid electric vehicle (HEV) powertrain controlled by a microprocessor. The controller selects operating modes—such as electric-only, engine-only, or combined operation—based on comparing vehicle torque requirements to predetermined setpoints to optimize fuel efficiency.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ibaraki ’882 and Koide - Claims 1-2 and 5

• Prior Art Relied Upon: Ibaraki ’882 (Patent 5,789,882) and Koide (Patent 5,934,395).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ibaraki ’882, a Toyota patent for a parallel hybrid vehicle, taught the core limitations of independent claim 1. This included a hybrid vehicle with an engine, two electric motors (a generator and a traction motor), a battery, and a controller. The controller in Ibaraki ’882 selected operating modes (MOTOR DRIVE, ENGINE DRIVE, ENGINE-MOTOR DRIVE) based on vehicle drive torque and speed by referencing a data map with a boundary line, which Petitioner equated to the claimed "setpoint." Petitioner contended that Ibaraki ’882 disclosed operating the engine when the required torque was above this setpoint, where engine operation is efficient. To the extent Ibaraki ’882 did not explicitly teach using its generator as a starter motor, Petitioner asserted that Koide supplied this teaching. Koide disclosed a similar hybrid system where a first motor/generator is used to start the engine, eliminating the need for a separate starter.
  • Motivation to Combine: A POSITA would combine Koide's engine-starting strategy with Ibaraki '882's system to achieve a known benefit: reducing the cost and complexity of the vehicle by eliminating a dedicated engine starter, a common objective in vehicle design.
  • Expectation of Success: The combination involved applying a known engine-starting technique from a similar hybrid system, presenting no technical hurdles and a high expectation of success.

Ground 2: Obviousness over Ibaraki ’882, Koide, and Frank - Claims 3 and 4

• Prior Art Relied Upon: Ibaraki ’882 (Patent 5,789,882), Koide (Patent 5,934,395), and Frank (Patent 6,116,363).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Ibaraki ’882 and Koide to address the limitations of claims 3 and 4, which required a time delay for transitioning between motor-only and engine propulsion modes. Petitioner argued that the control strategy in Ibaraki ’882 could lead to "frequent cycling"—rapidly starting and stopping the engine when the vehicle’s torque requirement hovers around the setpoint. This known problem in HEVs causes component wear, increases emissions, and degrades drivability. Frank was introduced because it explicitly recognized this frequent cycling problem and taught that it could be corrected by implementing a time delay, requiring the condition for a mode switch (e.g., road load > setpoint) to persist for a predetermined time before the transition occurs.
  • Motivation to Combine: A POSITA would be motivated to incorporate Frank’s time-delay solution into the Ibaraki ’882 system to solve the well-understood problem of frequent cycling. This modification would improve vehicle durability, efficiency, and driver experience, all predictable outcomes.
  • Expectation of Success: Implementing a time delay in the control logic was a simple software modification with a clear purpose and a high expectation of successfully preventing erratic mode shifting.

Ground 3: Obviousness over Ibaraki ’882, Koide, and Kawakatsu ’429 - Claim 16

• Prior Art Relied Upon: Ibaraki ’882 (Patent 5,789,882), Koide (Patent 5,934,395), and Kawakatsu ’429 (Patent 4,335,429).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claim 16, which specified that the total torque available from the engine is no greater than the combined torque from the electric motors. Petitioner asserted this concept was taught by Kawakatsu ’429, which described a hybrid system where the electric motor provides more torque than the engine. Kawakatsu ’429 illustrated operating regions where high torque demands were met by the motor, while the engine was reserved for its most efficient, lower-torque operating range.
  • Motivation to Combine: A POSITA would be motivated to apply the torque distribution strategy of Kawakatsu ’429 to the Ibaraki ’882 vehicle. This would allow for the use of a smaller, more fuel-efficient engine (downsizing), with the powerful electric motors providing torque for acceleration. This directly furthered the primary objective of hybrid vehicles, including that of Ibaraki ’882, which was to reduce fuel consumption and emissions.
  • Expectation of Success: Sizing motors and engines to achieve specific torque distribution profiles was a known design choice for hybrid vehicle engineers, ensuring a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that combined Ibaraki ’882 and Koide with: Vittone (Patent Application) to teach limiting the engine's rate of torque change to maintain stoichiometric combustion for emissions control (Claim 20); Yamaguchi (Patent 5,865,263) to teach pre-rotating the engine before starting to heat cylinders and reduce cold-start emissions (Claim 19); Ibaraki ’626 (Patent 6,003,626) to teach operating the engine below the setpoint during an electric motor failure to ensure drivability (Claim 22); and Lateur (Patent 5,823,280) to implement conventional cruise control functionality (Claim 14).

4. Key Claim Construction Positions

• "road load (RL)": Petitioner proposed construing this term as "the amount of instantaneous torque required to propel the vehicle, be it positive or negative." This construction was argued to be consistent with prior PTAB decisions.
• "setpoint (SP)": Petitioner argued for the construction "a predetermined torque value." Petitioner contended that the patent’s specification, claims, and prosecution history all defined the setpoint as a torque-based value against which another torque value (engine torque or road load) is compared. This was asserted to be narrower than the Patent Owner's proposed construction and critical to mapping the threshold boundary lines in the prior art to the claimed "setpoint."

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-5, 14, 16, 19, 20, and 22 of the ’347 patent as unpatentable.