Ford Wins Hybrid Legal Patent Review - Ford Inside News Community
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post #1 of 11 (permalink) Old 05-21-2016, 10:10 AM Thread Starter
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Ford Wins Hybrid Legal Patent Review

Ford Wins Another PTAB Review Of Paice Hybrid Car Patent
By Kali Hays

Law360, New York (November 2, 2015, 5:45 PM ET) -- The Patent Trial and Appeal Board on Monday granted Ford’s request for an inter partes review of another hybrid technology patent owned by Paice that a Maryland federal jury found had been infringed upon by two other automakers last month.

A three-judge panel agreed with Ford Motor Co. to institute the review of Paice LLC and The Abell Foundation Inc.’s U.S. Patent Number 7,104,347, which covers a hybrid car run by a microprocessor, finding Ford will likely prevail in proving the unpatentability of nearly all its challenges to the patent.

Two of Ford’s challenges to the patent are excluded from the review, however, which both include claims that the patent’s mode of storing a regenerative charge is obvious.

Monday’s decision comes just days after Ford secured a review of another Paice patent, U.S. Patent Number 7,237,634, which also covers its hybrid technology.

Ford has spurred on the reviews in light of Paice’s victory last month in a patent litigation case against Hyundai Motor Co. and Kia Motors Corp. A jury found the car companies owed Paice about $29 million for willfully infringing five of its hybrid technology patents, including the ‘347 and ‘634 patents.

Paice claimed that vehicles including the Hyundai Sonata hybrid and Kia Optima hybrid infringed the patents owned with the Abell Foundation, a nonprofit that funds the company’s technology development efforts.

Ford is facing a similar suit in Paice’s home base of Maryland, with the hybrid car company accusing Ford of using several of the same patents without authorization in its Fusion Hybrid, Fusion Plug-in Hybrid, C-MAX Hybrid, C-MAX Plug-in Hybrid and Lincoln MKZ Hybrid models.

Paice described the patents included in the litigation launched in 2014 as "foundational" and "the most dominant hybrid vehicle patents in the world."

The patents reveal the fundamental method of control for hybrid cars and describe a system enabling a vehicle to be powered by one or more electric motors, the internal combustion engine or a combination of both, the suit said.

The U.S. Patent and Trademark Office ruled at the end of September Paice’s ‘347 patent is not patentable due to prior art from the early 90’s rendering the technology obvious.

Counsel for the parties could not be reached Monday for comment.

Paice is represented by Timothy W. Riffe, Kevin E. Greene, Ruffin B. Cordell, Linda L. Kordziel and Brian J. Livedalen of Fish and Richardson PC.

Ford Is represented by Frank A. Angileri, John E. Nemazi, John P. Rondini and Michael N. MacCallum of Brooks Kushman PC and Lissi Mojica and Kevin Greenleaf of Dentons LLP.

The case is Ford Motor Co. v. Paice LLC & The Abell Foundation Inc., case numbers IPR2015-00794 and IPR2015-00795, in the Patent Trial and Appeal Board.

--Additional reporting by Erin Coe, Kurt Orzeck and Aebra Coe. Editing by Philip Shea.

http://www.law360.com/articles/72206...rid-car-patent
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Last edited by Bloggin; 05-21-2016 at 11:15 AM.
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post #2 of 11 (permalink) Old 05-21-2016, 10:19 AM Thread Starter
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Re: Ford Wins Another PTAB Review Of Paice Hybrid Car Patent

It seems after Toyota, Hyundai and Kia caved, Paice went after Ford. But Ford was ready for them. So far several of Paice's claims have been deemed 'not patentable', others were decided as 'obvious', or that any competent engineering team seeking a similar solution, would come to the same conclusion. Meaning you can't patent a cup when others looking for something to drink out of would obviously come to a the same design concept.

But until this is all over, it does seem to explain why Ford has not put it into more vehicles.
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post #3 of 11 (permalink) Old 05-21-2016, 10:21 AM Thread Starter
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Re: Ford Wins Another PTAB Review Of Paice Hybrid Car Patent

January, 2016 Update

Ford v. Pace

In Ford v. Pace (IPR2014-00884), the PTAB used its discretion to dismiss the Petitioner’s challenge against certain claims in a subsequent IPR proceeding, while the proceeding went forward to determine patentability of other claims. Final Written Decisions in two earlier IPR proceedings held claims 21 and 23 unpatentable over a first set of prior art references. In the subsequent IPR proceeding, the Petitioner challenged other claims of the same patent and also challenged the same claims again, relying on new grounds based on different prior references, Caraceni and Tabata ‘201 and Tabata ‘541. The PTAB found that the Petitioner “reasonably could have raised” the new grounds because “a skilled advocate would have been expected to discover and proffer [the different prior art] in the course of conducting due diligence on the patent at issue.” See IPR2014-00884 at paper no. 38, page 14. And the PTAB found that the Petitioner either must have known or should have known about these references. The Petitioner had relied on Caraceni in a related IPR Petition against a different patent that had been filed on the same day as the earlier IPR Petition, and the Tabata references were listed on the face of the patent. See IPR2014-00884 at paper no. 38, page 14.
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post #4 of 11 (permalink) Old 05-21-2016, 02:34 PM
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Re: Ford Wins Hybrid Legal Patent Review

^ s but
until (IF EVER) I wake up (enough to make sense of ^those^),

a kindergarten/nurseyschool version would be appreciated
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post #5 of 11 (permalink) Old 05-21-2016, 03:02 PM
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Re: Ford Wins Hybrid Legal Patent Review

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Originally Posted by 2b2 View Post
^ . . .but
until (IF EVER) I wake up (enough to make sense of ^those^),

a kindergarten/nurseyschool version would be appreciated :
You can't patent something that has already been invented (prior art) or something that is obvious to persons of ordinarily skills (regular folks like you or me)

Rickman
(U.S. and international patent holder)
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post #6 of 11 (permalink) Old 05-21-2016, 03:21 PM
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Re: Ford Wins Hybrid Legal Patent Review

THANKS, @Rickman !
&
congrats on YOUR patents

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post #7 of 11 (permalink) Old 05-22-2016, 12:01 PM
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Re: Ford Wins Hybrid Legal Patent Review

As an owner of a small startup, this kind of process makes me very happy. There's a patent troll extorting the companies in my industry and it's heartbreaking to see the troll preserve their patents after taking the biggest names in the industry -- even when a process gets started, the big guys all cave eventually and settle, keeping the patent in place. For them, taking on the $500k it takes to invalidate their portfolio based on prior art and obviousness would be peanuts. For us it would be serious investment.

So I applaud Ford for not caving into the extortion and fighting it head on. For established businesses, the cost of getting stupid troll patents invalidated is nothing, but it cleans up the landscape for smaller companies who cannot afford the license, or the USPT review.
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post #8 of 11 (permalink) Old 05-23-2016, 01:46 AM
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Re: Ford Wins Hybrid Legal Patent Review

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. . . So I applaud Ford for not caving into the extortion and fighting it head on. For established businesses, the cost of getting stupid troll patents invalidated is nothing, but it cleans up the landscape for smaller companies who cannot afford the license, or the USPT review.
Me too. And taking on some of these patent trolls might help keep some of these huge wide ranging patents the trolls make at bay. Anecdotally I have seen our second patent was held to much narrower claims than our first patent so I believe the USPTO's assursions of doing a better job in that regard.
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post #9 of 11 (permalink) Old 05-23-2016, 10:43 AM
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Re: Ford Wins Hybrid Legal Patent Review

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Me too. And taking on some of these patent trolls might help keep some of these huge wide ranging patents the trolls make at bay. Anecdotally I have seen our second patent was held to much narrower claims than our first patent so I believe the USPTO's assursions of doing a better job in that regard.
USPTo has learned a lot in the last 10 years. The problem are patents from cca 2001 when USPTO thought that merging 2 databases and making decisions on the findings from that joint database was innovative because it happened in a specific setting they never heard about before.

It's nauseating, but I am happy we have exparte review
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post #10 of 11 (permalink) Old 05-31-2016, 06:09 AM
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Re: Ford Wins Hybrid Legal Patent Review

So where would this leave Toyota and Hyundai if Ford wins this case
and the court decides that these "patents" are not patentable?

Would Paice be looking at decisions being overturned and huge give backs?
companies need protection from patent trolls
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Last edited by jpd80; 05-31-2016 at 06:14 AM.
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