Patent Owner’s Statements in Related Prosecution Can Support Obviousness Findings

In Paice LLC v. Ford Motor Company (Fed. Cir. Feb. 1, 2018), the Federal Circuit affirmed-in-part and vacated-in-part the Board’s IPR decisions finding certain claims of U.S. Patent Nos. 7,237,634 and 8,214,097, related to hybrid vehicle engine technology, obvious and remanded to the Board to determine whether the “electrical” claims had written description support in the priority application and the references incorporated therein.

In multiple IPR decisions, the Board found the challenged claims obvious based on a reference written by a co-inventor of the ’634 and ’097 patents, Alex Severinsky (“Severinsky”), and PCT Application Publication WO00/15455. Paice appealed.

The Federal Circuit rejected Paice’s argument that the Board erred in finding that Severinsky disclosed the claimed torque-based algorithm for determining a hybrid vehicle’s operating mode. The court explained that the Board’s finding was consistent with Paice’s ’634 patent’s own description of Severinsky and the court’s prior appeal decisions involving both Severinsky and Paice’s related patents.

The court also affirmed the Board’s claim construction of “abnormal and transient conditions” to include starting and stopping the vehicle’s engine. The court noted that Paice’s ’634 patent did not describe “abnormal” or “transient” conditions and therefore the Board’s construction, which looked to Paice’s related patent disclosures and prosecution history describing starting and stopping the engine as transient, was reasonable. Based on this construction and the findings related to Severinsky, the court affirmed the obviousness findings of part of the challenged claims.

Last, the court agreed with Paice that the Board erred in finding that WO00/15455 qualified as prior art to the challenged “electrical” claims of Paice’s ’634 patent, which claims priority to an earlier patent application that incorporates Severinsky by reference. The court then remanded for the Board to determine whether the priority application, with Severinsky’s incorporated disclosure, provides sufficient written description support for the ’634 patent’s “electrical” claims.