February 18, 2019

February 18, 2019

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Ford Succeeds In Invalidating Some, But Not All, Claims Of Two Paice’s Patents Related To Hybrid Vehicles

PAICE LLC V. FORD MOTOR CO., case nos. 2017-1387, 2017-1388, 2017-1390, 2017-1457, 2017-1458, Feb. 1, 2018.  Before Lourie, O’Malley and Taranto


  • Chenery (Securities & Exchange Commission v. Chenery Corp., 318 U.S. 80 (1943)) requires that administrative agencies provide a reasoned basis for their decisions.  In the context of post-grant reviews, Chenery requires the Board’s explanation to “be capable of being reasonably . . . discerned from a relatively concise . . . discussion.”

  • Substantial evidence supporting Board’s fact finding regarding the prior art disclosure includes consistent description of that prior art in the challenged patent, and Federal Circuit’s prior rulings involving related patents.

  • The language “[PRIOR ART], which is incorporated herein by this reference” is sufficient to incorporate by reference the prior art material in its entirety.

  • For claims to be entitled to a priority date of an earlier-filed application, the application must provide adequate written description support for the later-claimed limitations.

Procedural Posture:

Patent owner Paice appealed from PTAB’s final written decisions in six inter partes reviews (“IPR”) holding certain challenged claims of its two hybrid-vehicle patents unpatentable.  The Federal Circuit affirmed in part, vacated in part, and remanded.


  • PTAB procedureChenery requires the Board to “provide a reasoned basis for” its decision, that is, an explanation “capable of being reasonably . . . discerned from a relatively concise . . . discussion.” Here, the Board’s decisions clearly rejected Paice’s primary arguments, its obviousness determinations “flow directly from its rejection of these arguments,” and its analysis “is commensurate with Paice’s arguments.” Also, the Board cites “to the relevant portions of Ford’s briefing that explain how the prior art discloses the relevant claim limitations,” collectively making its analysis “readily discernible and sufficient under Chenery.”

  • IPRs: the Board’s fact-finding regarding the disclosure of Severinsky prior art reference was supported by substantial evidence. The Board found that Severinsky disclosed “a torque-based system for selecting operating modes.” This was consistent with the description of Severinsky in the challenged patent’s specification, and Federal Circuit’s prior rulings involving related Paice patents.

  • Claim Construction–BRI: The Board correctly construed the “abnormal and transient conditions” claim limitation under the Broadest Reasonable Interpretation (“BRI”) standard to capture “starting the engine and stopping the engine,” including in “city traffic and reverse operation.” There was no intrinsic evidence in the ’634 patent for construing this limitation, so the Board was justified in turning to the ’634 patent’s parent, the ’347 patent, for clues.  The Board’s construction was also consistent with Paice’s statements during prosecution of the related ’097 patent.

  • Claim construction–disclaimer: Paice’s statement made during prosecution of the related ’097 patent that “city traffic and reverse operation are normal conditions” did not amount to disclaiming “city traffic and reverse operation” from the scope of “abnormal and transient conditions” limitation. The Board appropriately concluded that “abnormal and transient conditions” include starting and stopping the engine in all modes of operation; starting and stopping the engine is a “transient” condition insofar as it is temporary.

  • Obviousness:  The Federal Circuit affirmed the Board’s obviousness findings as to various claims.  Substantial evidence supported the Board’s finding that the Severinsky reference disclosed a torque-based system for selecting operating modes.  The Board’s construction of “abnormal and transient conditions” was the broadest reasonable construction, and substantial evidence supported the Board’s findings that Severinsky disclosed this limitation.  Finally, the Board’s analysis was readily discernible and sufficient under Chenery.

  • Incorporation by reference: The Board erred in concluding that Paice’s ’817 application, to which the ’634 patent claims priority, did not incorporate Severinsky disclosure by reference.  The broad and unambiguous language in the ’817 application’s incorporation-by-reference clause: “U.S. Pat. No. 5,343,970 (the “’970 patent”) [Severinsky], which is incorporated herein by this reference,” is sufficient to incorporate Severinsky in its entirety because it identified with detailed particularity the specific material to be incorporated and where that material could be found.  The Board erred in relying on the second sentence from the incorporation-by-reference clause, “Where differences are not mentioned, it is to be understood that the specifics of the vehicle design shown in the ’970 patent are applicable to the vehicles shown herein as well,” which has no bearing on the extent of incorporation.

  • Priority Date: the Board found that the ’455 PCT publication, which lists the same inventors and was published more than one year before the filing date of the CIP application in which the “electrical claims” first appeared, was 102(b) prior art to the challenged electrical claims of the ’634 patent. Paice argued that the ’455 PCT publication is not prior art because the ’634 patent claims priority to the ’817 application, which predates the ’455 PCT publication. The Federal Circuit remanded to the Board to determine whether the ’817 application, with the entire Severinsky disclosure incorporated therein, provides the requisite written description support for the ’634 patent’s electrical claims.

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About this Author

Paul D. Ackerman, Litigation Attorney, IP Lawyer, Andrews Kurth Law Firm, New York

Paul's practice involves all aspects of intellectual property law with an emphasis on patent litigation and trial. He has represented clients in a wide range of popular forums for patent litigation, such as the Eastern District of Texas, the Eastern District of Virginia, the District of Delaware, and the Northern and Central Districts of California, and in “337 actions” before the International Trade Commission. Paul has litigated both utility and design patent cases across a wide range of technologies, including cellular telephony, software, internet technology, semiconductor fabrication...

Ksenia Takhistova, Andrews Kurth Law Firm, New York, Intellectual Property Litigation Attorney

Ksenia’s practice focuses on IP litigation and client counseling across a wide variety of modern technologies. She has substantial experience in all aspects of litigation, representing both plaintiffs and defendants in patent cases (including ANDA litigations) before the Federal District Courts, at the International Trade Commission, and in post-grant proceedings (IPRs) at the US Patent and Trademark Office. She also handles trademark (false advertising) and trade secret disputes in both Federal and State Courts. Ksenia also represents clients in settlement negotiations and IP licensing discussions, and performs due diligence and opinion work, including freedom-to-operate, patentability, infringement and validity analyses. Drawing on her educational and professional background in both the mechanical and chemical engineering fields, she is experienced in handling disputes in mechanical and medical devices, electrical and computer, life sciences, chemical, materials, and consumer products areas. She frequently writes on the current intellectual property law issues, and is active in professional associations for intellectual property and technology professionals.

Qi Zhao patent law attorney Andrews Kurth Law Firm

Qi has over eight years of experience in assisting clients on patent matters. She has handled more than 100 opinion matters in the areas of pharmaceuticals, chemicals and medical devices. She prepares infringement, validity and freedom-to-operate opinions relating to filings of Abbreviated New Drug Applications and 505(b)(2) New Drug Applications by a generic drug manufacturer. She also prepares and prosecutes patent applications in various technical areas, including small molecule pharmaceuticals, biologics, antibodies, vaccines, diagnostic assays, personalized medicine, food products,...