Takeaway: The Board will not resolve disputes relating to whether a Petitioner is breaching an agreement not to challenge the validity of claims, particularly where the same issue is pending before a district court and has not yet been decided.

In its Decision to Institute, the Board determined that it was more likely than not that at least one of the challenged claims is unpatentable and then instituted inter partes review of claims 30-33, 35, 36, and 39 of the ’097 Patent but denied review of claim 38.  The ’097 Patent relates to  a hybrid vehicle with a control strategy that increases fuel efficiency and reduces undesirable emissions during start and operation of the vehicle by limiting the rate of increasing engine torque and maintaining a near stoichiometric air-fuel mixture.

The Board began by addressing Patent Owner’s argument that Petitioner is “barred or estopped” under 37 C.F.R. § 42.104(a) from requesting inter partes review of the ’097 patent due to an alleged breach of an arbitration agreement between the parties and thus does not have standing to file the Petition.  The Board rejected Patent Owner’s “purported ‘standing’ argument” on the grounds that it is a disputed contractual matter outside the scope of its authority, noting that the issue of the alleged breach is currently the subject of preliminary injunction motion in co-pending district court litigation and has not yet been decided.

Next, after concluding that no particular claim term requires an express construction at this time, the Board analyzed whether claim 38 is anticipated by the ’455 PCT publication.  The Board first determined that claim 38 is only entitled to the benefit of a CIP application and not to the earlier ’743 and ’817 applications that it purported to claim priority to.  Petitioner argued that the ’455 PCT publication (which is a combination of the disclosures of the ’743 and ’817 applications) inherently disclosed an embodiment encompassed by claim 38—while acknowledging that the ’455 PCT publication is not a “claim supporting disclosure” of the full scope of claim 38.  Petitioner relied on expert testimony in an attempt to establish anticipation, but the Board rejected the testimony on the grounds that (1) the expert was clearly utilizing and combining the teachings of two references, and (2) it was not persuaded that a skilled artisan at the time of the claimed invention—rather than only the inventors—would have recognized the allegedly inherent information.  The Board also rejected Petitioner’s argument that claim 38 was obvious because it too relied on the “legally-flawed conclusion of its declarant.” The Board then turned to claims 30-33, 35, 36 and 39 finding that Petitioner established that it is more likely than not that those claims would have been obvious over the combined teachings of Severinsky and Anderson.  The Board was not persuaded by Patent Owner’s argument that a skilled artisan would not equate Anderson’s teaching of “slow transients” for claim 30’s engine “limiting . . . engine output torque” and cited portions of Anderson expressly describing the engine’s “transient capabilities” in terms of “power output” and “combinations of speed and torque.”  The Board also rejected Patent Owner’s contention that Petitioner’s arguments were “merely conclusory” and “entitled to little or no weight.”  With respect to dependent claims 21-33, 35-36, and 39, Patent Owner did not argue the claims separately from independent claim 30 and the Board’s review of the petition and claim chart persuaded it that the dependent limitations are taught by Severinsky and Anderson (claims 31, 315, 26, and 39), together with Yamaguchi (claim 32), and Katsuno (claim 33).

Finally, the Board addressed additional grounds based on Caraceni, either alone or in combination with Boberg, declining to institute review on those grounds as to claims 30-33, 35, and 36 because the Petitioner did not articulate how the implicit teaching of a claim element by these references is “meaningfully distinct” from the express teaching of the same limitation in Severinsky and Anderson.

Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc.,IPR2013-00570
Paper 10: Decision – Institution of Inter Partes Review 
Dated: September 30, 2014 
Patent 8,214,097 
Before: Sally C. Medley, Kalyan K. Deshpande, and Carl M. DeFranco
Written by: DeFranco