In its Decision, the Board denied institution, concluding that there is not a reasonable likelihood that Petitioner would prevail in showing any of claims 1-3, 5, 6, 19, 20, 26, 27, 40, 58, and 62 of the ’134 Patent are unpatentable, and therefore, denied institution of inter partes review. The ’134 Patent relates to a hybrid vehicle with an internal combustion engine, a traction motor, a starter motor, and a battery bank, all controlled by a microprocessor.
The Board began with claim construction, stating that the terms of an unexpired patent are construed according to their broadest reasonable interpretation in light of the specification of the patent in which they appear. The only term that the Board construed was “maximum DC voltage,” which Patent Owner argued refers to a voltage under load, and not a nominal voltage. Petitioner did not construe this term, but its declarant agreed with Patent Owner’s construction. Therefore, the Board adopted Patent Owner’s construction.
The Board then turned to the first ground of unpatentability, that claims 1-3, 5, 19, 20, 26, 27, 40, 58, and 62 are unpatentable under 35 U.S.C. § 102(b) as anticipated by the ’455 PCT publication. The Board first discussed whether the ’455 PCT publication is prior art. The Board noted that the ’455 PCT publication was filed on September 10, 1999, and while the application that issued as the ’134 Patent was filed on May 8, 2006, it claims the benefit of applications that have a date prior to September 10, 1999. Petitioner argued that the application that issued as the ’134 Patent is not entitled to the benefit under 35 U.S.C. § 120 of an application having a date prior to April 2, 2001, the date of the ’866 application, because there was no disclosure prior to the date of the ’866 application of the claimed “at least 2.5” ratio of maximum voltage to current supplied. Patent Owner did not argue that the challenged claims of the ’134 Patent are entitled to a date prior to April 2, 2001. The Board noted that a patent claim is entitled to the benefit of the filing date of an earlier-filed application only if the disclosure of the earlier-filed application provides written description support as required by 35 U.S.C. § 112, first paragraph. The Board accepted Petitioner’s argument, supported by expert testimony, that there was not explicit or inherent disclosure of the “at least 2.5” ratio recited in the challenged claims prior to the April 2, 2001 filing date. Therefore, the Board found that the ’455 PCT publication is available prior art under 35 U.S.C. § 102(b) against the ’134 Patent claims.
The Board then examined whether the challenged claims are anticipated by the ’455 PCT publication, noting that the disputed limitation in all of the challenged claims is the requirement of a maximum DC voltage to current supplied to be at least 2.5. Petitioner argued that this limitation is inherently described in an embodiment of the ’455 PCT publication by relying on expert testimony to demonstrate that the ’455 PCT publication describes parameters that a person of ordinary skill in the art would have recognized would lead to two different ratios of DC voltage to current supplied, 3.84:1 and 2.76:1. Patent Owner argued that the calculation of the 2.76:1 ratio is based on parameters found in the disclosure of the ’866 application, to which the ’134 Patent is entitled to priority, as opposed to parameters that are found in the ’455 PCT publication. The Board agreed and found that it is impermissible for Petitioner to take parameters from the ’866 application to arrive at the claimed invention because the proposed ground of unpatentability is anticipation, not obviousness, and there is no indication that the “inherent” or “implicit” ratio of 2.76:1 could be arrived at with the parameters solely from the ’455 PCT publication and the knowledge of a person of ordinary skill in the art. Further, there is no explanation as to why the battery bank in the ’455 PCT publication necessarily has the same value for the resistance/volt metric calculated in the expert declaration based on the examples given in the ’866 application. Therefore, the Board found that Petitioner is combining the teachings of two references to arrive at the claimed invention, which is not permissible under 35 U.S.C. § 102(b), and there has not been a showing that the information contained in the ’866 application would have been known by someone of ordinary skill in the art beyond the inventors of the ’866 application.
The Board then reviewed the ground that claims 1-3, 5, 19, 20, 26, 27, 40, 58, and 62 are unpatentable under 35 U.S.C. § 103 as obvious over the ’455 PCT publication. Petitioner stated that “[i]f the Board were to find the ’455 PCT publication did not exactly teach any of the limitations of claims 1-3, 5, 19-20, 26-27, 40, 58, and 62, then slight variations of the ’455 PCT publication would have been obvious to one of ordinary skill in the art. (Stein Decl., FMC 1002, ¶212),” without any other explanation, including in the expert declaration. The Board found that Petitioner’s conclusory statement failed to satisfy the requirements that a petition must: identify with particularity each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for each challenged claim, 35 U.S.C. § 312(a)(3); include a statement of the precise relief requested and a full statement of the reasons for the requested relief, including a detailed explanation of the significance of the evidence including material facts, the governing law, rules, and precedent, 37 C.F.R. § 42.22(a); specify where each element of a challenged claim is found in the prior art patents or printed publications, 37 C.F.R. § 42.104(b)(4); and provide the relevance of the evidence supporting the challenge, including identification of specific portions of the evidence that support the challenge, 37 C.F.R. § 42.104(b)(5).
The Board next examined the last challenged ground, that claim 6 is unpatentable under 35 U.S.C. § 103 as obvious over the ’455 PCT publication and Ehsani. The Board found that, for the same reasons stated above, Petitioner had not established a reasonable likelihood of prevailing on the ground that claim 1 is unpatentable. Because claim 6 depends from claim 1 and Petitioner only relied on Ehsani to meet the limitations of claim 6, Petitioner also had not established a reasonable likelihood of prevailing on this ground of unpatentability.
Finally, the Board addressed Patent Owner’s Motion to Seal the unredacted Patent Owner Preliminary Response and Exhibit 2001. The Board did not rely upon the information Patent Owner sought to seal, therefore, it expunged the unredacted version of the Patent Owner Preliminary Response and Exhibit 2001.
Ford Motor Company v. Paice LLC & The Abell Foundation, Inc., IPR2014-00568
Paper 12: Decision Denying Institution of Inter Partes Review
Dated: September 8, 2014
Patent: 7,455,134 B2
Before: Sally C. Medley, Kalyan K. Deshpande, and Carl M. DeFranco
Written by: Medley
Related Proceeding: Paice, LLC et al. v. Ford Motor Company, No. 1:14-cv-00492 (D. Md.)