On February 2, 2017, Paice LLC (“Paice”) and the Abell Foundation, Inc. (collectively, “Complainants”)—both of Baltimore, Maryland—filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Ford Motor Company of Dearborn, Michigan (“Ford”) unlawfully imports into the U.S., sells for importation, and/or sells within the U.S. after importation certain hybrid electric vehicles and components thereof that infringe one or more claims of Complainants’ U.S. Patent Nos. 7,104,347 (the ’347 patent), 7,237,634 (the ’634 patent), 7,455,134 (the ’134 patent), 7,559,388 (the ’388 patent), and 8,214,097 (the ’097 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to controlling the powertrains of hybrid electric vehicles. In particular, the ’347 and ’643 patents relate to a control strategy for selecting operating modes of a hybrid vehicle. The ’134 patent relates to a hybrid vehicle that includes an internal combustion engine, as well as one or more electric motors to supply torque to the driving wheels of the vehicle. Lastly, the ’388 and ’097 patents relate to a hybrid vehicle featuring a control strategy that reduces emissions.

In the complaint, Complainants state that Ford imports and sells products that infringe the asserted patents. The complaint specifically refers to the Ford Fusion Hybrid, Ford Fusion Plug-in Hybrid, and Lincoln MKZ Hybrid as infringing products.

Regarding domestic industry, Complainants state that Toyota Motor Corp., Hyundai Motor Company, Kia Motors Corp., and others are licensees of the asserted patents and that these licensees have made significant investments in the U.S. relating to products that practice the asserted patents, including the Toyota Prius Hybrid, Hyundai Sonata Hybrid, and Kia Optima Hybrid. According to the complaint, these licensees conduct relevant customer support, repair, warranty service, and research and development activities in the U.S. relating to products that practice the asserted patents. Complainants further state that a domestic industry exists based on Complainants’ licensing activities in the U.S., including investigating potential licensees, soliciting licensing arrangements, negotiating license agreements, and pursuing licenses through litigation when necessary.

As to related litigation, Complainants state that Paice previously asserted the ’347 and ’634 patents against various Toyota entities in the U.S. District Court for the Eastern District of Texas, and that such litigation ended with a settlement agreement which provided Toyota with a license to all Paice patents. Complainants further state that they previously asserted the ’347 , ’634, ’388, and ’097 patents against various Hyundai and Kia entities in the U.S. District Court for the District of Maryland, and that, similar to the Toyota litigation, this litigation ended with a settlement agreement providing Hyundai and Kia with a license to all Paice patents. Complainants further state that they previously asserted the ’347, ’634, and ’097 patents against various automakers in ITC Inv. No. 337-TA-998, and that this investigation was terminated in December 2016 based on a settlement agreement. See our January 5, 2017 post for more details. Lastly, Complainants state that they are currently asserting the asserted patents against Ford in the U.S. District Court for the District of Maryland, and that this litigation is stayed pending multiple inter partes review (IPR) proceedings at the U.S. Patent and Trademark Office.

With respect to potential remedy, Paice requests that the Commission issue a permanent limited exclusion order and a permanent cease and desist order directed at Ford.