PAICE LLC v. FORD MOTOR CO., case nos. 2017-1263, 2017-1264, 2017-1308, 2017-1309, 2017-1310, 2017-1311, Feb. 1, 2018. Before Lourie, O’Malley (dissenting), and Taranto (nonprecedential)
- Substantial evidence supported a finding that method claims for controlling a hybrid vehicle comprising torque-based comparisons were obvious in view of the express disclosure of power-based comparisons in the prior art, the mathematical relationship between power and torque, and the knowledge of a person of skill in the art explained by Ford’s expert.
- Patent drawings may be relied on to determine proportions of the elements when the drawings include scale information.
Paice appealed from PTAB’s final written decisions in eight inter partes reviews (“IPRs”) holding certain challenged claims of its two hybrid-vehicle patents unpatentable. The Federal Circuit affirmed.
- Obviousness: The two challenged patents describe a control strategy, based on the torque needed for propulsion, for switching between different modes of operating a hybrid vehicle—use of (one or more) electric motors, a gas engine, or both. The Federal Circuit held that substantial evidence supported the Board’s finding that Ibaraki prior art reference disclosed torque-based comparisons in view of the express disclosure of power-based comparisons in the prior art, the mathematical relationship between power, torque and speed, and credible testimony of Ford’s expert, explaining the prior art’s disclosure of control strategy based on torque levels at a given speed.
- Obviousness—prior art drawings: The Board’s finding that Ibaraki prior art disclosed the claim requirement of a setpoint “substantially less” than the engine’s maximum torque output was supported by a person of ordinary skill’s understanding of the figure from the prior art. The Federal Circuit distinguished this case from Hockerson-Halberstadt, Inc. v. Avia Group International, Inc., 222 F.3d 951 (Fed. Cir. 2000) (“patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue”) because the figure of Ibaraki provided certain scale information.
- Judge O’Malley, dissenting: the Board’s finding that Ibaraki disclosed a torque-based control algorithm was not supported by substantial evidence, as Ibaraki disclosed only a power-based control algorithm, not a torque-based one. The Board’s analysis was inconsistent with both the Ibaraki’s disclosure and the claims and specifications of the patents at issue, and was also circular. The mere fact that power and torque are mathematically related did not imply that Ibaraki’s power-based comparison necessarily involved a torque-based comparison.