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.