Case: 16-1412 Document: 46-2 Page: 1 Filed: 03/07/2017
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`(2 of 28)
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`NOTE: This disposition is nonprecedential.
`
`Wniteb ~tates <!Court of ~peals
`for t6e jf eberal <!Circuit
`
`PAICE LLC, THE ABELL FOUNDATION, INC.,
`Appellants
`
`v.
`
`FORD MOTOR COMPANY,
`Appellee
`
`2016-1412, 2016-1415
`
`Appeals from the United States Patent and Trade(cid:173)
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2014-00571, IPR2014-00579.
`
`PAICE LLC, THE ABELL FOUNDATION, INC.,
`Appellants
`
`v.
`
`FORD MOTOR COMPANY,
`Appellee
`
`2016-1745
`
`BMW1005
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`Case: 16-1412 Document: 46-2 Page: 2 Filed: 03/07/2017
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`(3 of 28)
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`2
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`PAICE LLC v. FORD MOTOR COMPANY
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`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2014-
`00884.
`
`Decided: March 7, 201 7
`
`RUFFIN B. CORDELL, Fish & Richardson, PC, Washing(cid:173)
`ton, DC, argued for appellants. Also represented by
`TIMOTHY W. RIFFE, LINDA KORDZIEL, DANIEL TISHMAN,
`BRIAN JAMES LIVEDALEN.
`
`MATTHEW J. MOORE, Latham & Watkins LLP, Wash(cid:173)
`ington, DC, argued for appellee. Also represented by
`GABRIEL BELL; ANDREW B. TURNER, JOHN P. RONDINI,
`FRANK A. ANGILERI, SANGEETA G. SHAH, Brooks Kushman
`PC, Southfield, MI.
`
`Before PROST, Chief Judge, SCHALL and STOLL,
`Circuit Judges.
`Opinion for the court filed PER CURIAM.
`Opinion dissenting-in-part filed by Circuit Judge
`STOLL.
`
`PERCURIAM.
`This is an appeal from final written decisions by the
`Patent Trial and Appeal Board in three inter partes
`review proceedings that invalidated various claims of
`Paice's patent relating to hybrid vehicle control strategies.
`Paice contends that the Board misconstrued two claim
`terms and lacked substantial evidence to support its
`obviousness findings. We disagree with Paice and affirm
`the Board's decisions.
`
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`Case: 16-1412 Document: 46-2 Page: 3 Filed: 03/07/2017
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`(4 of 28)
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`PAJCE LLC v. FORD MOTOR COMPANY
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`3
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`BACKGROUND
`
`In early 2014, Paice LLC and the Abell Foundation
`(collectively, "Paice") sued Ford Motor Company for
`infringement of several patents covering hybrid vehicle
`technology, including U.S. Patent No. 7,104,347. Hybrid
`cars, in general, contain both a gas-powered engine and
`one or more battery-powered electric motors that can be
`used in isolation or in tandem to propel the car. The '34 7
`patent teaches a vehicle control strategy to reduce emis(cid:173)
`sions that operates the engine only when it is efficient to
`do so and uses the motor to propel the vehicle in scenarios
`where the engine cannot operate efficiently. The efficient
`range for engine operation is determined, in part, based
`on the vehicle's instantaneous torque demands, or road
`load ("RL"). '34 7 patent col. 19 11. 54-56, col. 12 11. 38-43.
`Typically, this efficient range occurs when the vehicle's
`road load is a substantial percentage of the engine's
`maximum torque output ("MTO"), i.e., when the torque
`demand is greater than 30% of MTO. Id. at col. 20 11. 52-
`60, col. 13 11. 60-61.
`·
`
`The '34 7 patent teaches that the vehicle can operate
`in multiple different modes depending on its instantane(cid:173)
`ous torque requirements, the battery's state of charge,
`and other operating parameters. Id. at col. 19 11. 54-56.
`Three possible operating modes include: 1) an electric
`mode used during low-speed driving in which the required
`torque is provided to the wheels only by the motor, id. at
`col. 35 1. 66 - col. 36 1. 7; 2) an engine mode used during
`highway cruising where the engine alone provides the
`required torque, id. at col. 36 11. 23-39; and 3) a hybrid
`mode that is used when the torque required is above the
`engine's MTO and the motor provides the additional
`torque above that provided by the engine, id. at col. 36
`11. 40-46. Claim 1 is illustrative and recites:
`
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`Document: 46-2 Page: 4 Filed: 03/07/2017
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`4
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`PAICE LLC v. FORD MOTOR COMPANY
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`1. A hybrid vehicle comprising:
`
`an internal combustion engine controlla(cid:173)
`bly coupled to road wheels of said vehicle;
`
`a first electric motor connected to said en(cid:173)
`gine [a]nd operable to start the engine respon(cid:173)
`sive to a control signal;
`
`a second electric motor connected to road
`wheels of said vehicle, and operable as a mo(cid:173)
`tor, to apply torque to said wheels to propel
`said vehicle, and as a generator, for accepting
`torque from at least said wheels for generat-
`ing current;
`·
`
`a battery, for providing current to said
`motors and accepting charging current from at
`least said second motor; and
`
`a controller for controlling the flow of elec(cid:173)
`trical and mechanical power between said en(cid:173)
`gine, first and second motors, and wheels,
`wherein said controller starts and operates
`said engine when torque require[dj to be pro(cid:173)
`duced by said engine to propel the vehicle
`and/ or to drive either one or both said electric
`motor(s) to charge said battery is at least equal
`to a setpoint (SP) above which said engine
`torque is efficiently produced, and wherein the
`torque produced by said engine when operated
`at said setpoint (SP) is substantially less than
`the maximum torque output (MTO) of said
`engine.
`Id. at col. 58 11. 13-37 (emphasis added).
`Following Paice's assertion of its patents against Ford
`in the district court, Ford filed a series of inter partes
`review petitions, three of which were instituted for the
`'34 7 patent: the 884, 571, and 579 petitions. The Board
`
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`PAICE LLC v. FORD MOTOR COMPANY
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`5
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`construed the terms "setpoint" and "road load" in all three
`decisions, but each of the petitions addressed different
`combinations of prior art references. For example, the
`884 petition invalidated claims 1, 7, and 10 of the '34 7
`patent as obvious in light of the Caraceni reference. Ford
`Motor Co. v. Paice LLC, IPR2014-884, 2015 WL 8536739,
`at *12 (PTAB Dec. 10, 2015) ("884 Board Decision"). In
`the 571 petition, the Board concluded that the Severinsky
`reference rendered obvious claims 23 and 36 and found
`that claims 1, 6, 7, 9, 15, and 21 would have been obvious
`over a combination of Severinsky and the Ehsani refer(cid:173)
`ence. Ford Motor Co. v. Paice LLC, IPR2014-571, 2015
`WL 5782084, at *13 (PTAB Sept. 28, 2015) ("571 Board
`Decision"). Finally, the Board found claims 1, 7, 8, 18, 21,
`23, and 37 would have been obvious over the collective
`teachings of the Bumby references in the 579 petition,
`which was combined with the 571 petition on appeal to
`this court. Ford Motor Co. v. Paice LLC, IPR2014-579,
`2015 WL 5782085, at *17 (PTAB Sept. 28, 2015) ("579
`Board Decision").
`Paice appeals from the Board's final written decisions
`in all three petitions. We have jurisdiction pursuant to
`35 U.S.C. § 141(a) and 28 U.S.C. § 1295(a)(4)(A).
`
`DISCUSSION
`
`Paice raises four main arguments on appeal. First,
`Paice asserts that the Board improperly construed "set(cid:173)
`point" and "road load" in the '34 7 patent. Second, Paice
`faults the Board for concluding that Caraceni teaches
`certain disputed limitations of claims l, 7, and 10. Paice
`next argues that the Board erred in concluding that
`Severinsky renders obvious claims 23 and 36 and that
`Severinsky in combination with Ehsani renders obvious
`claims 1, 6, 7, 9, 15, and 21. Finally, Paice challenges the
`Board's conclusion that a POSA would have been moti(cid:173)
`vated to combine the Bumby references and that they
`teach the limitations of claims 1, 7, 8, 18, 21, 23, and 37.
`
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`PAICE LLC v. FORD MOTOR COMPANY
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`A claim is unpatentable as obvious "if the differences
`between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was
`made to a person having ordinary skill in the art."
`35 U.S.C. § 103. 1 We review the Board's ultimate obvi(cid:173)
`ousness determination de novo and underlying factual
`findings for substantial evidence. Harmonic Inc. v. Avid
`Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). Sub(cid:173)
`stantial evidence "means such relevant evidence as a
`reasonable mind might accept as adequate to support a
`conclusion." Consol. Edison Co. v. NLRB, 305 U.S. 197,
`229 (1938). Factual findings underlying the obviousness
`inquiry include the scope and content of the prior art, the
`differences between the prior art and the claimed inven(cid:173)
`tion, whether there is a motivation to combine prior art
`references, the level of . ordinary skill in the art, and
`relevant secondary considerations. Merck & Cie v. Gnosis
`S.P.A., 808 F.3d 829, 833 (Fed. Cir. 2015), cert. denied,
`137 S. Ct. 297 (2016).
`
`I.
`Paice first alleges that the Board erred by construing
`the claim term "setpoint" as a "predetermined torque
`value that may or may not be reset." 884 Board Decision,
`2015 WL 8536739, at *4. Paice asserts that the Board's
`construction misses the fundamental purpose of the
`setpoint, which Paice claims is to trigger a transition
`between operating modes, and that this purpose should be
`included in the construction. We see no error in the
`Board's construction and decline to read a requirement
`
`Given the effective filing date of the '34 7 patent's
`claims, the version of 35 U.S.C. § 103 that applies here is.
`the one in force preceding the changes made by the Amer(cid:173)
`ica Invents Act. See Leahy-Smith America Invents Act,
`Pub. L. No. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
`
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`PAICE LLC v. FORD MOTOR COMPANY
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`7
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`that the setpoint trigger a transition between operating
`modes into the construction.
`
`When construing claims, the Board must apply the
`broadest reasonable construction in light of the patent's
`specification. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2142 (2016). "We review intrinsic evidence and the
`ultimate construction of the claim de novo." SightSound
`Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir.
`2015).
`
`Like the Board, we start with the plain claim lan(cid:173)
`guage. Claim 1, for example requires the controller to
`"startO and operateO said engine when torque require[d]
`to be produced by said engine ... is at least equal to a
`'34 7 patent col. 58 11. 29-33 (emphasis
`setpoint (SP)."
`added). This language equates the setpoint to a torque
`value and makes clear that the transition requirement
`Paice urges us to read into the meaning of "setpoint" is
`included in the claim's structure and need not be read into
`the definition of setpoint. The claim itself calls for the
`controller to start the engine, i.e., transition between
`modes, when the torque required by the engine reaches a
`setpoint, i.e., a "predetermined torque value that may or
`may not be reset," 884 Board Decision, 2015 WL 8536739,
`at *4.
`
`The specification and dependent claims demonstrate
`that transitions can occur before a setpoint is reached, in
`addition to not occurring despite reaching a setpoint,
`which further bolsters our conclusion that this require(cid:173)
`ment should not be included in the term's construction.
`For example, the specification describes a scenario where
`the driver rapidly depresses the accelerator pedal while in
`low-speed operation-indicating an urgent need for full
`power-which causes the engine to start "before the road
`load reaches any particular setpoint SP."
`'34 7 patent
`col. 41 11. 14-19 (emphasis added). The specification also
`teaches hysteresis in the mode-switching determination,
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`8
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`PAICE LLC v. FORD MOTOR COMPANY
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`meaning that a new mode might be entered "only after
`the road load exceeded a first, lower setpoint SP for an
`extended period of time." Id. at col. 41 11. 41-43 (emphasis
`added). Similarly, several claims that depend from claim
`1 show that a transition will only occur if the setpoint has
`been maintained for a period of time. Claim 3 uses the
`controller to effect a transition "only when RL>SP for at
`least a predetermined time." Id. at col. 58 11. 41-46 (em(cid:173)
`phasis added). Claim 4 requires the controller to switch
`from engine propulsion· to motor propulsion but "only
`when RL<SP for at least a predetermined time." Id. at
`col. 58 11. 48-52 (emphasis added). Accordingly, for all
`these reasons, we agree with the Board's construction of
`setpoint.
`
`We also discern no error in the Board's construction of
`the term "road load" as "the amount of instantaneous
`torque required to propel the vehicle, be it positive or
`negative." 884 Board Decision, 2015 WL 8536739, at *3.
`The Board's construction is amply supported by the
`specification, which repeatedly defines the road load as
`the vehicle's instantaneous torque requirement. See, e.g.,
`'347 patent col. 12 11. 38-42 ("The '817 and '743 applica(cid:173)
`tions also disclose that the vehicle operating mode is
`determined by a microprocessor responsive to the 'road
`load', that is, the vehicle's instantaneous torque demands,
`i.e., that amount of torque required to propel the vehicle
`at a desired speed."); id. at col. 38 11. 41-42 ("FIG. 7(a)
`shows the . vehicle's instantaneous torque requirement,
`that is, the 'road load' .... "); id. at col. 36 11. 8-10, col. 40
`11. 24-25.
`
`Despite acknowledging that the Board "properly con(cid:173)
`strued" road load, Paice alleges that the Board impermis(cid:173)
`sibly broadened the construction during its invalidity
`analysis to encompass not only the instantaneous torque
`required to propel the vehicle-the Board's construction(cid:173)
`but also the driver's request for torque "as indicated by
`mere accelerator pedal position." Appellant Br. 29 (16-
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`PAICE LLC v. FORD MOTOR COMPANY
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`9
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`17 45 appeal). According to Paice, the accelerator pedal
`position alone does not identify the road load, and the
`Board's application of this broader construction to the
`prior art references was error. We view Paice's argument
`as a challenge to the Board's application of its claim
`construction, which we address in various sections below
`and review for substantial evidence. We also note that
`the '34 7 patent itself does not disclose how to determine
`road load other than by reference to the accelerator pedal
`position.
`In discussing the prior art, for example, the
`specification states: "the operator's depressing the accel(cid:173)
`erator pedal signifies an increase in desired speed, i.e., an
`increase in road load, while reducing the pressure on the
`accelerator or depressing the brake pedal signifies a
`desired reduction in vehicle speed."
`'34 7 patent col. 12
`11. 46-50 (emphasis added); see also id. at col. 30 11. 1-2
`(determining road load "by measuring the rate at which
`the operator depresses accelerator pedal").
`II.
`Paice next articulates several reasons for reversing
`the Board's conclusion that claims 1, 7, and 10 are obvious
`over the Caraceni reference. First, with respect to all
`three claims, Paice alleges that Caraceni fails to disclose
`using a setpoint to start and operate the gas engine.
`Next, Paice claims that Caraceni does not disclose a
`battery for providing current to the first and second
`electric motors, as required by all three claims. Finally,
`Paice contends that Caraceni does not meet the road load
`limitation of claim 7. We find none of these arguments
`persuasive and that substantial evidence supports the
`Board's contrary fact findings.
`
`A.
`Paice first argues that the decision to operate the en(cid:173)
`gine in Caraceni is a manual one and that there is no
`disclosure in Caraceni's hybrid mode of starting the
`engine because of a setpoint, as required by claims l, 7,
`
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`Case: 16-1412 Document: 46-2 Page: 10 Filed: 03/07/2017
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`(11 of 28)
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`10
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`PAICE LLC v. FORD MOTOR COMPANY
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`and 10. Paice also contends that the contrary testimony
`of Ford's expert, Dr. Davis, is nothing more than hind(cid:173)
`sight bias that relies on the teachings of the '34 7 patent to
`explain how to use its patented method to accomplish
`Caraceni's goal of operating the gas engine when the·
`specific fuel consumption is low. These arguments were
`considered and rejected by the Board. And we find that
`substantial evidence supports the Board's finding that,
`when operating in hybrid mode, Caraceni compares "the
`torque require[d] to be produced by said engine to propel
`the vehicle" to a torque-based setpoint and starts the
`engine if that torque is at least equal to the setpoint, as
`required hy claims 1, 7, and 10.2
`
`Although the driver in Caraceni manually selects the
`vehicle's mode of operation-all-electric, engine-only, or
`hybrid-substantial evidence supports the Board's finding
`that, once the driver selects the hybrid mode, Caraceni's
`vehicle management unit ("VMU") maximizes fuel effi(cid:173)
`ciency by automatically splitting power between the
`
`Paice also contends that the Board lacks substan(cid:173)
`2
`tial evidence to support its finding that Caraceni uses a
`torque-based setpoint to start and oper~te the gas engine
`to charge the battery. We need not reach this argument
`because the broadest reasonable construction of claim 1
`only requires that the torque-based setpoint be used
`either to start and operate the engine to propel the vehicle
`or to charge the battery, but not both. '34 7 patent col. 58
`11. 29-33 (requiring a "controller [to] startO and operateO
`said engine when torque require[d] to be produced by said
`engine to [1] propel the vehicle and/or [2] to drive either
`one or both said electric motor(s) to charge said battery is
`at least equal to a setpoint (SP)" (emphasis added)).
`Indeed, Paice admitted in its briefing for the related 16-
`1412 and 16-1415 appeals "that the limitation is written
`in the disjunctive." Appellant Reply Br. 27.
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`Document: 46-2 Page: 11 Filed: 03/07/2017
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`PAICE LLC v. FORD MOTOR COMPANY
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`11
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`engine and electric motor according to the control algo(cid:173)
`rithm depicted graphically in Figure 9 of Caraceni. 884
`Board Decision, 2015 WL 8536739, at *8. As the Board
`emphasized in its decision, Caraceni states that, in "hy(cid:173)
`brid mode," the VMU "activates the two drive trains
`through the inverter for the electric motor and the engine
`Id.
`electronic control unit
`respectively."
`(quoting
`J.A. 1392).3 Thus, contrary to Paice's suggestion, sub(cid:173)
`stantial evidence supports the Board's finding that the
`VMU, not the driver, activates the engine and motor in
`hybrid mode. The Board's finding is further supported by
`the testimony of Ford's expert, Dr. Davis, who cited
`portions of Caraceni to reasonably demonstrate that, in
`the hybrid mode, Caraceni's VMU sends control signals to
`start and operate the gas engine. J.A. 1893-94.
`The Board's finding that Caraceni discloses a hybrid
`mode in which the VMU starts and operates the engine
`when the torque required to propel the vehicle is at least
`equal to a torque-based setpoint is further supported by
`Dr. Dav:is's annotated version of Caraceni Figure 9 and
`supporting testimony. Annotated Figure 9 is shown
`below:
`
`3 Appendix citations in this section are to the 16-
`17 45 appeal materials.
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`12
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`PAICE LLC v. FORD MOTOR COMPANY
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`Engine Operation is Efficient HYBRID MODE
`l
`3
`
`s .
`!
`.,...'""'I::.::.;:..,---:--·-
`
`~
`
`"Setpoint (SP}" "'---~
`. . .. . '
`-
`
`Thennl
`-= tGtQlt.
`t
`Eh:drtc
`-
`lof~'ll'l
`I. Tllo cJ.cltk 11101or po'<lldol .U lbe reqo:lnd IO!qll• w~°"' cnatn,, 11111 b[&b ,pccllil,, floel .,.,....,~
`'ll>o <11111~• d1UV01., 1itrq11D will> Umitod torqH ,IRl<licat; th •hoc:tric molor dcllw.r.,. C<!fllflOIIKIIIIAQ' torque
`2.
`l. Tile aaaJ,lo ct.Uwm Iba i.otalr.qd!Ulall torqn
`4.. l!ltctrhl .ino1or Ill~ 11 llldm "'bcn Ille ~ ·d tolqlle II hlaber tlian rite_,_ t1n1ln 1onaue
`,. flr:dclna IOtqUO II praf'!dcd b)l lh• •lf"11ic IIIOIM 11'1 rtchra• di• hlllrtlU
`'· 'lite, eleclrfc: mocor P<IIIIJ .. lb,, •111eriu: Clio 1b«rmll ,n~ne. dcl~ ro,quo r111 l>odl wctle>11111d rccll~se
`7. n..,Jectrio .ll101or doe,""4 dttllvuuypoilliv1flo11j"6(or llxlion (lim!1td 'fllllitle pe,liiru,anca)
`
`884 Board Decision, 2015 WL 8536739, at *9 (reproducing
`figure on J.A. 1904). As Dr. Davis explained and annotat(cid:173)
`ed Figure 9 fairly clearly depicts, the engine is off in
`Id.
`region 1 and the motor alone propels the vehicle.
`(citing J.A. 1902-05, ,r,r 275-79). Dr. Davis further
`testified that, in the transition between regions 1 and 2,
`as the driver's request for torque increases above a pre(cid:173)
`determined threshold level-noted by Dr. Dav:is using a
`green dashed line-the engine is automatically activated
`by Caraceni's VMU. Id. We find that Dr. Davis's testi(cid:173)
`mony and annotated Figure 9 provide substantial evi(cid:173)
`dence to support the Board's finding that Caraceni's
`engine is started and operated based on a setpoint when
`in hybrid mode.
`
`B.
`In addition, substantial evidence supports the Board's
`finding that Caraceni discloses a traction battery for
`providing current to the engine starter and electric motor,
`thus satisfying the requirement of claims 1, 7, and 10 of a
`battery that provides current to the first and second
`
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`PAICE LLC v. FORD MOTOR COMPANY
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`13
`
`electric motors. It is true that, as Paice points out, Cara(cid:173)
`ceni does not depict a connection between the traction
`battery and the engine starter. Nor does Caraceni state
`that such a connection exists. But, as the Board ex(cid:173)
`plained, Caraceni's engine starter must be connected to a
`battery to operate, and Caraceni discloses only one bat(cid:173)
`Id. at *10-11; see also
`tery-the traction battery.
`J.A. 1392 (Figure 10). These two facts are undisputed on
`the record and provide substantial evidence in support of
`the Board's finding that one of ordinary skill in the art
`would have understood that the traction battery needed to
`be connected to the engine starter.
`ln its opinion, the Board relied on "common sense" to
`conclude that "a skilled artisan would have readily under(cid:173)
`stood that the 'engine starter' needed to be connected,
`directly or indirectly, to one of the battery packs that
`make up the 'traction battery."' 884 Board Decision, 2015
`WL 8536739, at *11. Citing Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016), Paice argues that the
`Board erred by relying on "common sense" to supply a
`missing element in the claims. First, we note that the
`Board only resorted to common sense as a secondary
`rationale for its conclusion that Caraceni's engine starter
`receives current from the traction battery. 884 Board
`Decision, 2015 WL 8536739, at *11 (introducing the
`common sense argument with the phrase "[e]ven so").
`In any event, we conclude that the Board did not err
`by invoking common sense in its analysis. In Arendi, this
`court held that the Board can rely on common sense to
`inform its obviousness analysis "if explained with suffi(cid:173)
`cient reasoning." Arendi, 832 F.3d at 1361. Continuing,
`this court explained that the Board's "common sense"
`determination cannot be conclusory or unsupported by
`Id. at 1366.
`substantial evidence.
`In this case, the
`Board's conclusion that, "as a matter of common sense," a
`skilled artisan would have understood that the engine
`starter needed to be connected to the traction battery was
`
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`Document: 46-2 Page: 14 Filed: 03/07/2017
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`PAICE LLC v. FORD MOTOR COMPANY
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`supported by the undisputed fact that Caraceni's engine
`starter must be connected to a battery and Caraceni only
`discloses one battery. Because it was supported by sub(cid:173)
`stantial evidence, the Board's common sense analysis did
`not run afoul of Arendi. As such, we conclude that the
`Board properly relied on a common sense analysis.
`
`Finally, we address Paice's factual assertion that
`Caraceni's engine starter would have been connected to a
`standard battery because it would have been too small to
`accept current from the traction battery. As the Board
`noted, "[n]owhere does Caraceni disclose that the 'engine
`starter' is connected to a standard battery." 884 Board
`Decision, 2015 WL 8536739, at *11. The Board also
`credited Dr. Davis's testimony, including his testimony
`explaining that one of ordinary skill in the art reading
`Caraceni would have understood that Caraceni's engine
`starter was an electric motor that could not operate
`unless a current is supplied from the car battery. Though
`not specifically cited by the Board, Dr. Davis testified at
`length that, by 1993, there were several well-known
`techniques for providing power to a starter motor using a
`hybrid battery like the traction battery. On this record,
`we find substantial evidence to support the Board's hold(cid:173)
`ing that this limitation is obvious in view of Caraceni.
`
`C.
`Paice also alleges that Caraceni does not disclose
`claim 7's requirement that the vehicle is operated in one
`of a plurality of operating modes based on a comparison of
`road load to a setpoint. According to Paice, the Board
`erred by relying solely on Caraceni's required traction
`torque, which is set by the accelerator pedal position, to
`teach road load because road load also must account for
`external factors such as wind, rolling friction, and grade.
`The Board's finding to the contrary, however, is supported
`by substantial evidence.
`
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`As stated above, we agree with the Board that the
`term "road load," properly construed, means "the amount
`of instantaneous torque required to propel the vehicle, be
`it positive or negative." When applying this construction,
`the Board correctly noted that the '347 patent's specifica(cid:173)
`tion itself undermines Paice's argument by tying the
`accelerator pedal position to road load: "the operator's
`depressing the accelerator pedal signifies an increase in
`desired speed, i.e., an increase in road load." 884 Board
`Decision, 2015 WL 8536739, at *3 (quoting '347 patent
`col. 12 11. 45-51). In fact, the '347 patent's specification
`does not disclose how to determine road load other than
`by reference to the accelerator pedal position. The Board
`also properly relied on the testimony of Ford's expert,
`Dr. Davis, in concluding that Caraceni's use of the re(cid:173)
`quired traction torque to select whether to operate the
`engine, motor, or both in Caraceni's hybrid mode is no
`different than using road load as recited in claim 7. Id. at
`*11 (citing J.A. 1913-26, 41[41[ 297-317). Given this record,
`we conclude that substantial evidence supports the
`Board's finding that Caraceni discloses the road load
`limitations in claim 7.
`
`III.
`Paice also challenges the Board's conclusion that
`claims 23 and 36 are obvious in view of Severinsky and
`that claims 1, 6, 7, 9, 15, and 21 are obvious based on
`Severinsky in combination with Ehsani. Specifically,
`Paice advances a series of interrelated arguments focus(cid:173)
`ing on whether Severinsky discloses the use of road load
`and a setpoint to make decisions on the operating mode
`and charging of the battery. We find that substantial
`evidence supports the Board's fact findings, and we dis(cid:173)
`cern no error in its conclusion that the claims are obvious.
`
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`A.
`
`Paice first asserts that the Board erred in finding that
`Severinsky4 teaches a comparison of road load to a set(cid:173)
`point to determine when to operate the engine as required
`by claims 1, 6, 7, 9, 15, 21, 23, and 36. According to Paice,
`Severinsky's microprocessor uses speed to make such
`determinations regarding operation of the engine. There
`is substantial evidence, however, to support the Board's
`determination that, although Severinsky describes the
`use of speed as a factor considered by the microprocessor,
`it also uses the vehicle's torque requirements, or road
`load, in determining when to operate the engine. For
`example, the Board relied on the following passage from
`Severinsky: "It will be appreciated that according to the
`invention the internal combustion engine is run only in
`the near vicinity of its most efficient operational point,
`that is, such that it produces 60-90% of its maximum
`torque whenever operated." U.S. Patent No. 5,343,970
`col. 20 11. 63-67 (emphasis added); 571 Board Decision,
`2015 WL 5782084, at *8. The Board found Dr. Davis's
`interpretation of this passage credible when he explained
`that "[t]he lower end of the 60-90% range disclosed by
`Severinsky '970 would also be known as the proposed
`'predetermined torque value' or 'setpoint' below which the
`engine does not operate." J.A. 1586, ,r 204; 571 Board
`Decision, 2015 WL 5782084, at *10.5 The Board was
`further persuaded by Dr. Davis's testimony that Severin(cid:173)
`sky "is generally, if not always, using torque/road load in
`571 Board Decision, 2015 WL
`its mode decisions."
`
`4 The Severinsky reference was incorporated into,
`and shares an inventor with, the '34 7 patent. '34 7 patent
`col. 10 11. 37-41.
`5 Appendix citations in this section and Section IV,
`infra, are to the materials from the combined joint appen(cid:173)
`dix in the 16-1412 and 16-1415 appeals.
`
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`5782084, at *10 (quoting J.A. 3326, ,r 19). After reviewing
`the record and the Board's analysis, we conclude that
`substantial evidence supports the Board's fact finding
`that Severinsky teaches a comparison of road load to a
`setpoint to determine when to operate the engine.
`
`B.
`
`Even if Severinsky does rely on torque as a control
`variable, Paice alleges that Severinsky's discussion of the
`60-90% efficient torque range refers to output torque as
`opposed to input torque and, thus, the Board erred in
`finding claims 1, 6, 7, 9, 15, 21, 23, and 36 obvious in view
`of Severinsky or based on Severinsky in view of Ehsani.
`The Board concluded that road load is an output torque,
`not an input torque, "for the simple reason" that the
`claims compare road load to the engine's maximum torque
`output. Id. at *11. We disagree with the Board's reinter(cid:173)
`pretation of "road load" as including output torque. As we
`noted above, the Board properly construed "road load" as
`"the amount of instantaneous torque required to propel
`the vehicle, be it positive or negative." The Board erred
`by reinterpreting the claim.
`Nonetheless, the '347 patent itself admits that Sever(cid:173)
`insky discloses a torque-based control mode, stating: "an
`important aspect of the invention of the [Severinsky] '970
`patent" is improving efficiency "by operating the internal
`combustion engine only at relatively high torque output
`levels." '347 patent col. 25 11. 4-7. Although this passage
`refers to output torque, the next sentence discusses the
`required torque, or input torque: "[w]hen the vehicle
`operating conditions require torque of this approximate
`magnitude, the engine is used to propel the vehicle" and
`"when less torque is required, an electric motor powered
`by electrical energy stored in a substantial battery bank
`Id. at col. 25 11. 8-13 (emphases
`drives the vehicle."
`added). These "same advantages," the '347 patent notes,
`are "provided by the system of the present invention." Id.
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`at col. 25 ll. 15-16. Accordingly, we conclude that the
`Board's finding that Severinsky relies on road load to
`start and operate the engine and motor was supported by
`substantial evidence.
`
`C.
`
`Paice also argues that Severinsky does not render
`claims 23 and 36 obvious because Severinsky uses speed
`and the battery's state of charge as the two criteria for
`determining w