      NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
               ______________________

  PAICE LLC, THE ABELL FOUNDATION, INC.,
                 Appellants

                          v.

            FORD MOTOR COMPANY,
                     Appellee
              ______________________

                2016-1412, 2016-1415
               ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2014-00571, IPR2014-00579.

     -----------------------------------

  PAICE LLC, THE ABELL FOUNDATION, INC.,
                 Appellants

                          v.

            FORD MOTOR COMPANY,
                     Appellee
              ______________________

                     2016-1745
               ______________________
2                          PAICE LLC   v. FORD MOTOR COMPANY



    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00884.
                 ______________________

                  Decided: March 7, 2017
                  ______________________

    RUFFIN B. CORDELL, Fish & Richardson, PC, Washing-
ton, DC, argued for appellants. Also represented by
TIMOTHY W. RIFFE, LINDA KORDZIEL, DANIEL TISHMAN,
BRIAN JAMES LIVEDALEN.

    MATTHEW J. MOORE, Latham & Watkins LLP, Wash-
ington, DC, argued for appellee. Also represented by
GABRIEL BELL; ANDREW B. TURNER, JOHN P. RONDINI,
FRANK A. ANGILERI, SANGEETA G. SHAH, Brooks Kushman
PC, Southfield, MI.
                 ______________________

        Before PROST, Chief Judge, SCHALL and STOLL,
                     Circuit Judges.
           Opinion for the court filed PER CURIAM.
      Opinion dissenting-in-part filed by Circuit Judge
                        STOLL.
PER CURIAM.
    This is an appeal from final written decisions by the
Patent Trial and Appeal Board in three inter partes
review proceedings that invalidated various claims of
Paice’s patent relating to hybrid vehicle control strategies.
Paice contends that the Board misconstrued two claim
terms and lacked substantial evidence to support its
obviousness findings. We disagree with Paice and affirm
the Board’s decisions.
PAICE LLC   v. FORD MOTOR COMPANY                           3



                       BACKGROUND
     In early 2014, Paice LLC and the Abell Foundation
(collectively, “Paice”) sued Ford Motor Company for
infringement of several patents covering hybrid vehicle
technology, including U.S. Patent No. 7,104,347. Hybrid
cars, in general, contain both a gas-powered engine and
one or more battery-powered electric motors that can be
used in isolation or in tandem to propel the car. The ’347
patent teaches a vehicle control strategy to reduce emis-
sions that operates the engine only when it is efficient to
do so and uses the motor to propel the vehicle in scenarios
where the engine cannot operate efficiently. The efficient
range for engine operation is determined, in part, based
on the vehicle’s instantaneous torque demands, or road
load (“RL”). ’347 patent col. 19 ll. 54–56, col. 12 ll. 38–43.
Typically, this efficient range occurs when the vehicle’s
road load is a substantial percentage of the engine’s
maximum torque output (“MTO”), i.e., when the torque
demand is greater than 30% of MTO. Id. at col. 20 ll. 52–
60, col. 13 ll. 60–61.
     The ’347 patent teaches that the vehicle can operate
in multiple different modes depending on its instantane-
ous torque requirements, the battery’s state of charge,
and other operating parameters. Id. at col. 19 ll. 54–56.
Three possible operating modes include: 1) an electric
mode used during low-speed driving in which the required
torque is provided to the wheels only by the motor, id. at
col. 35 l. 66 – col. 36 l. 7; 2) an engine mode used during
highway cruising where the engine alone provides the
required torque, id. at col. 36 ll. 23–39; and 3) a hybrid
mode that is used when the torque required is above the
engine’s MTO and the motor provides the additional
torque above that provided by the engine, id. at col. 36
ll. 40–46. Claim 1 is illustrative and recites:
4                          PAICE LLC   v. FORD MOTOR COMPANY



    1. A hybrid vehicle comprising:
            an internal combustion engine controlla-
        bly coupled to road wheels of said vehicle;
            a first electric motor connected to said en-
        gine [a]nd operable to start the engine respon-
        sive to a control signal;
            a second electric motor connected to road
        wheels of said vehicle, and operable as a mo-
        tor, to apply torque to said wheels to propel
        said vehicle, and as a generator, for accepting
        torque from at least said wheels for generat-
        ing current;
            a battery, for providing current to said
        motors and accepting charging current from at
        least said second motor; and
            a controller for controlling the flow of elec-
        trical and mechanical power between said en-
        gine, first and second motors, and wheels,
            wherein said controller starts and operates
        said engine when torque require[d] to be pro-
        duced by said engine to propel the vehicle
        and/or to drive either one or both said electric
        motor(s) to charge said battery is at least equal
        to a setpoint (SP) above which said engine
        torque is efficiently produced, and wherein the
        torque produced by said engine when operated
        at said setpoint (SP) is substantially less than
        the maximum torque output (MTO) of said
        engine.
Id. at col. 58 ll. 13–37 (emphasis added).
    Following Paice’s assertion of its patents against Ford
in the district court, Ford filed a series of inter partes
review petitions, three of which were instituted for the
’347 patent: the 884, 571, and 579 petitions. The Board
PAICE LLC   v. FORD MOTOR COMPANY                         5



construed the terms “setpoint” and “road load” in all three
decisions, but each of the petitions addressed different
combinations of prior art references. For example, the
884 petition invalidated claims 1, 7, and 10 of the ’347
patent as obvious in light of the Caraceni reference. Ford
Motor Co. v. Paice LLC, IPR2014-884, 2015 WL 8536739,
at *12 (PTAB Dec. 10, 2015) (“884 Board Decision”). In
the 571 petition, the Board concluded that the Severinsky
reference rendered obvious claims 23 and 36 and found
that claims 1, 6, 7, 9, 15, and 21 would have been obvious
over a combination of Severinsky and the Ehsani refer-
ence. Ford Motor Co. v. Paice LLC, IPR2014-571, 2015
WL 5782084, at *13 (PTAB Sept. 28, 2015) (“571 Board
Decision”). Finally, the Board found claims 1, 7, 8, 18, 21,
23, and 37 would have been obvious over the collective
teachings of the Bumby references in the 579 petition,
which was combined with the 571 petition on appeal to
this court. Ford Motor Co. v. Paice LLC, IPR2014-579,
2015 WL 5782085, at *17 (PTAB Sept. 28, 2015) (“579
Board Decision”).
    Paice appeals from the Board’s final written decisions
in all three petitions. We have jurisdiction pursuant to
35 U.S.C. § 141(a) and 28 U.S.C. § 1295(a)(4)(A).
                        DISCUSSION
    Paice raises four main arguments on appeal. First,
Paice asserts that the Board improperly construed “set-
point” and “road load” in the ’347 patent. Second, Paice
faults the Board for concluding that Caraceni teaches
certain disputed limitations of claims 1, 7, and 10. Paice
next argues that the Board erred in concluding that
Severinsky renders obvious claims 23 and 36 and that
Severinsky in combination with Ehsani renders obvious
claims 1, 6, 7, 9, 15, and 21. Finally, Paice challenges the
Board’s conclusion that a POSA would have been moti-
vated to combine the Bumby references and that they
teach the limitations of claims 1, 7, 8, 18, 21, 23, and 37.
6                         PAICE LLC   v. FORD MOTOR COMPANY



     A claim is unpatentable as obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art.”
35 U.S.C. § 103. 1 We review the Board’s ultimate obvi-
ousness determination de novo and underlying factual
findings for substantial evidence. Harmonic Inc. v. Avid
Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). Sub-
stantial evidence “means such relevant evidence as a
reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197,
229 (1938). Factual findings underlying the obviousness
inquiry include the scope and content of the prior art, the
differences between the prior art and the claimed inven-
tion, whether there is a motivation to combine prior art
references, the level of ordinary skill in the art, and
relevant secondary considerations. Merck & Cie v. Gnosis
S.P.A., 808 F.3d 829, 833 (Fed. Cir. 2015), cert. denied,
137 S. Ct. 297 (2016).
                             I.
    Paice first alleges that the Board erred by construing
the claim term “setpoint” as a “predetermined torque
value that may or may not be reset.” 884 Board Decision,
2015 WL 8536739, at *4. Paice asserts that the Board’s
construction misses the fundamental purpose of the
setpoint, which Paice claims is to trigger a transition
between operating modes, and that this purpose should be
included in the construction. We see no error in the
Board’s construction and decline to read a requirement


    1   Given the effective filing date of the ’347 patent’s
claims, the version of 35 U.S.C. § 103 that applies here is
the one in force preceding the changes made by the Amer-
ica Invents Act. See Leahy–Smith America Invents Act,
Pub. L. No. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
PAICE LLC   v. FORD MOTOR COMPANY                         7



that the setpoint trigger a transition between operating
modes into the construction.
    When construing claims, the Board must apply the
broadest reasonable construction in light of the patent’s
specification. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2142 (2016). “We review intrinsic evidence and the
ultimate construction of the claim de novo.” SightSound
Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir.
2015).
    Like the Board, we start with the plain claim lan-
guage. Claim 1, for example requires the controller to
“start[] and operate[] said engine when torque require[d]
to be produced by said engine . . . is at least equal to a
setpoint (SP).” ’347 patent col. 58 ll. 29–33 (emphasis
added). This language equates the setpoint to a torque
value and makes clear that the transition requirement
Paice urges us to read into the meaning of “setpoint” is
included in the claim’s structure and need not be read into
the definition of setpoint. The claim itself calls for the
controller to start the engine, i.e., transition between
modes, when the torque required by the engine reaches a
setpoint, i.e., a “predetermined torque value that may or
may not be reset,” 884 Board Decision, 2015 WL 8536739,
at *4.
     The specification and dependent claims demonstrate
that transitions can occur before a setpoint is reached, in
addition to not occurring despite reaching a setpoint,
which further bolsters our conclusion that this require-
ment should not be included in the term’s construction.
For example, the specification describes a scenario where
the driver rapidly depresses the accelerator pedal while in
low-speed operation—indicating an urgent need for full
power—which causes the engine to start “before the road
load reaches any particular setpoint SP.” ’347 patent
col. 41 ll. 14–19 (emphasis added). The specification also
teaches hysteresis in the mode-switching determination,
8                             PAICE LLC   v. FORD MOTOR COMPANY



meaning that a new mode might be entered “only after
the road load exceeded a first, lower setpoint SP for an
extended period of time.” Id. at col. 41 ll. 41–43 (emphasis
added). Similarly, several claims that depend from claim
1 show that a transition will only occur if the setpoint has
been maintained for a period of time. Claim 3 uses the
controller to effect a transition “only when RL>SP for at
least a predetermined time.” Id. at col. 58 ll. 41–46 (em-
phasis added). Claim 4 requires the controller to switch
from engine propulsion to motor propulsion but “only
when RL<SP for at least a predetermined time.” Id. at
col. 58 ll. 48–52 (emphasis added). Accordingly, for all
these reasons, we agree with the Board’s construction of
setpoint.
     We also discern no error in the Board’s construction of
the term “road load” as “the amount of instantaneous
torque required to propel the vehicle, be it positive or
negative.” 884 Board Decision, 2015 WL 8536739, at *3.
The Board’s construction is amply supported by the
specification, which repeatedly defines the road load as
the vehicle’s instantaneous torque requirement. See, e.g.,
’347 patent col. 12 ll. 38–42 (“The ’817 and ’743 applica-
tions also disclose that the vehicle operating mode is
determined by a microprocessor responsive to the ‘road
load’, that is, the vehicle’s instantaneous torque demands,
i.e., that amount of torque required to propel the vehicle
at a desired speed.”); id. at col. 38 ll. 41–42 (“FIG. 7(a)
shows the vehicle’s instantaneous torque requirement,
that is, the ‘road load’ . . . .”); id. at col. 36 ll. 8–10, col. 40
ll. 24–25.
    Despite acknowledging that the Board “properly con-
strued” road load, Paice alleges that the Board impermis-
sibly broadened the construction during its invalidity
analysis to encompass not only the instantaneous torque
required to propel the vehicle—the Board’s construction—
but also the driver’s request for torque “as indicated by
mere accelerator pedal position.” Appellant Br. 29 (16-
PAICE LLC   v. FORD MOTOR COMPANY                          9



1745 appeal). According to Paice, the accelerator pedal
position alone does not identify the road load, and the
Board’s application of this broader construction to the
prior art references was error. We view Paice’s argument
as a challenge to the Board’s application of its claim
construction, which we address in various sections below
and review for substantial evidence. We also note that
the ’347 patent itself does not disclose how to determine
road load other than by reference to the accelerator pedal
position. In discussing the prior art, for example, the
specification states: “the operator’s depressing the accel-
erator pedal signifies an increase in desired speed, i.e., an
increase in road load, while reducing the pressure on the
accelerator or depressing the brake pedal signifies a
desired reduction in vehicle speed.” ’347 patent col. 12
ll. 46–50 (emphasis added); see also id. at col. 30 ll. 1–2
(determining road load “by measuring the rate at which
the operator depresses accelerator pedal”).
                             II.
    Paice next articulates several reasons for reversing
the Board’s conclusion that claims 1, 7, and 10 are obvious
over the Caraceni reference. First, with respect to all
three claims, Paice alleges that Caraceni fails to disclose
using a setpoint to start and operate the gas engine.
Next, Paice claims that Caraceni does not disclose a
battery for providing current to the first and second
electric motors, as required by all three claims. Finally,
Paice contends that Caraceni does not meet the road load
limitation of claim 7. We find none of these arguments
persuasive and that substantial evidence supports the
Board’s contrary fact findings.
                             A.
    Paice first argues that the decision to operate the en-
gine in Caraceni is a manual one and that there is no
disclosure in Caraceni’s hybrid mode of starting the
engine because of a setpoint, as required by claims 1, 7,
10                         PAICE LLC   v. FORD MOTOR COMPANY



and 10. Paice also contends that the contrary testimony
of Ford’s expert, Dr. Davis, is nothing more than hind-
sight bias that relies on the teachings of the ’347 patent to
explain how to use its patented method to accomplish
Caraceni’s goal of operating the gas engine when the
specific fuel consumption is low. These arguments were
considered and rejected by the Board. And we find that
substantial evidence supports the Board’s finding that,
when operating in hybrid mode, Caraceni compares “the
torque require[d] to be produced by said engine to propel
the vehicle” to a torque-based setpoint and starts the
engine if that torque is at least equal to the setpoint, as
required by claims 1, 7, and 10. 2
    Although the driver in Caraceni manually selects the
vehicle’s mode of operation—all-electric, engine-only, or
hybrid—substantial evidence supports the Board’s finding
that, once the driver selects the hybrid mode, Caraceni’s
vehicle management unit (“VMU”) maximizes fuel effi-
ciency by automatically splitting power between the



     2  Paice also contends that the Board lacks substan-
tial evidence to support its finding that Caraceni uses a
torque-based setpoint to start and operate the gas engine
to charge the battery. We need not reach this argument
because the broadest reasonable construction of claim 1
only requires that the torque-based setpoint be used
either to start and operate the engine to propel the vehicle
or to charge the battery, but not both. ’347 patent col. 58
ll. 29–33 (requiring a “controller [to] start[] and operate[]
said engine when torque require[d] to be produced by said
engine to [1] propel the vehicle and/or [2] to drive either
one or both said electric motor(s) to charge said battery is
at least equal to a setpoint (SP)” (emphasis added)).
Indeed, Paice admitted in its briefing for the related 16-
1412 and 16-1415 appeals “that the limitation is written
in the disjunctive.” Appellant Reply Br. 27.
PAICE LLC   v. FORD MOTOR COMPANY                      11



engine and electric motor according to the control algo-
rithm depicted graphically in Figure 9 of Caraceni. 884
Board Decision, 2015 WL 8536739, at *8. As the Board
emphasized in its decision, Caraceni states that, in “hy-
brid mode,” the VMU “activates the two drive trains
through the inverter for the electric motor and the engine
electronic control unit respectively.”       Id. (quoting
J.A. 1392). 3 Thus, contrary to Paice’s suggestion, sub-
stantial evidence supports the Board’s finding that the
VMU, not the driver, activates the engine and motor in
hybrid mode. The Board’s finding is further supported by
the testimony of Ford’s expert, Dr. Davis, who cited
portions of Caraceni to reasonably demonstrate that, in
the hybrid mode, Caraceni’s VMU sends control signals to
start and operate the gas engine. J.A. 1893–94.
    The Board’s finding that Caraceni discloses a hybrid
mode in which the VMU starts and operates the engine
when the torque required to propel the vehicle is at least
equal to a torque-based setpoint is further supported by
Dr. Davis’s annotated version of Caraceni Figure 9 and
supporting testimony. Annotated Figure 9 is shown
below:




   3   Appendix citations in this section are to the 16-
1745 appeal materials.
12                        PAICE LLC   v. FORD MOTOR COMPANY




884 Board Decision, 2015 WL 8536739, at *9 (reproducing
figure on J.A. 1904). As Dr. Davis explained and annotat-
ed Figure 9 fairly clearly depicts, the engine is off in
region 1 and the motor alone propels the vehicle. Id.
(citing J.A. 1902–05, ¶¶ 275–79). Dr. Davis further
testified that, in the transition between regions 1 and 2,
as the driver’s request for torque increases above a pre-
determined threshold level—noted by Dr. Davis using a
green dashed line—the engine is automatically activated
by Caraceni’s VMU. Id. We find that Dr. Davis’s testi-
mony and annotated Figure 9 provide substantial evi-
dence to support the Board’s finding that Caraceni’s
engine is started and operated based on a setpoint when
in hybrid mode.
                            B.
    In addition, substantial evidence supports the Board’s
finding that Caraceni discloses a traction battery for
providing current to the engine starter and electric motor,
thus satisfying the requirement of claims 1, 7, and 10 of a
battery that provides current to the first and second
PAICE LLC   v. FORD MOTOR COMPANY                        13



electric motors. It is true that, as Paice points out, Cara-
ceni does not depict a connection between the traction
battery and the engine starter. Nor does Caraceni state
that such a connection exists. But, as the Board ex-
plained, Caraceni’s engine starter must be connected to a
battery to operate, and Caraceni discloses only one bat-
tery—the traction battery.        Id. at *10–11; see also
J.A. 1392 (Figure 10). These two facts are undisputed on
the record and provide substantial evidence in support of
the Board’s finding that one of ordinary skill in the art
would have understood that the traction battery needed to
be connected to the engine starter.
    In its opinion, the Board relied on “common sense” to
conclude that “a skilled artisan would have readily under-
stood that the ‘engine starter’ needed to be connected,
directly or indirectly, to one of the battery packs that
make up the ‘traction battery.’” 884 Board Decision, 2015
WL 8536739, at *11. Citing Arendi S.A.R.L. v. Apple Inc.,
832 F.3d 1355 (Fed. Cir. 2016), Paice argues that the
Board erred by relying on “common sense” to supply a
missing element in the claims. First, we note that the
Board only resorted to common sense as a secondary
rationale for its conclusion that Caraceni’s engine starter
receives current from the traction battery. 884 Board
Decision, 2015 WL 8536739, at *11 (introducing the
common sense argument with the phrase “[e]ven so”).
    In any event, we conclude that the Board did not err
by invoking common sense in its analysis. In Arendi, this
court held that the Board can rely on common sense to
inform its obviousness analysis “if explained with suffi-
cient reasoning.” Arendi, 832 F.3d at 1361. Continuing,
this court explained that the Board’s “common sense”
determination cannot be conclusory or unsupported by
substantial evidence. Id. at 1366. In this case, the
Board’s conclusion that, “as a matter of common sense,” a
skilled artisan would have understood that the engine
starter needed to be connected to the traction battery was
14                        PAICE LLC   v. FORD MOTOR COMPANY



supported by the undisputed fact that Caraceni’s engine
starter must be connected to a battery and Caraceni only
discloses one battery. Because it was supported by sub-
stantial evidence, the Board’s common sense analysis did
not run afoul of Arendi. As such, we conclude that the
Board properly relied on a common sense analysis.
    Finally, we address Paice’s factual assertion that
Caraceni’s engine starter would have been connected to a
standard battery because it would have been too small to
accept current from the traction battery. As the Board
noted, “[n]owhere does Caraceni disclose that the ‘engine
starter’ is connected to a standard battery.” 884 Board
Decision, 2015 WL 8536739, at *11. The Board also
credited Dr. Davis’s testimony, including his testimony
explaining that one of ordinary skill in the art reading
Caraceni would have understood that Caraceni’s engine
starter was an electric motor that could not operate
unless a current is supplied from the car battery. Though
not specifically cited by the Board, Dr. Davis testified at
length that, by 1993, there were several well-known
techniques for providing power to a starter motor using a
hybrid battery like the traction battery. On this record,
we find substantial evidence to support the Board’s hold-
ing that this limitation is obvious in view of Caraceni.
                            C.
    Paice also alleges that Caraceni does not disclose
claim 7’s requirement that the vehicle is operated in one
of a plurality of operating modes based on a comparison of
road load to a setpoint. According to Paice, the Board
erred by relying solely on Caraceni’s required traction
torque, which is set by the accelerator pedal position, to
teach road load because road load also must account for
external factors such as wind, rolling friction, and grade.
The Board’s finding to the contrary, however, is supported
by substantial evidence.
PAICE LLC   v. FORD MOTOR COMPANY                        15



     As stated above, we agree with the Board that the
term “road load,” properly construed, means “the amount
of instantaneous torque required to propel the vehicle, be
it positive or negative.” When applying this construction,
the Board correctly noted that the ’347 patent’s specifica-
tion itself undermines Paice’s argument by tying the
accelerator pedal position to road load: “the operator’s
depressing the accelerator pedal signifies an increase in
desired speed, i.e., an increase in road load.” 884 Board
Decision, 2015 WL 8536739, at *3 (quoting ’347 patent
col. 12 ll. 45–51). In fact, the ’347 patent’s specification
does not disclose how to determine road load other than
by reference to the accelerator pedal position. The Board
also properly relied on the testimony of Ford’s expert,
Dr. Davis, in concluding that Caraceni’s use of the re-
quired traction torque to select whether to operate the
engine, motor, or both in Caraceni’s hybrid mode is no
different than using road load as recited in claim 7. Id. at
*11 (citing J.A. 1913–26, ¶¶ 297–317). Given this record,
we conclude that substantial evidence supports the
Board’s finding that Caraceni discloses the road load
limitations in claim 7.
                            III.
    Paice also challenges the Board’s conclusion that
claims 23 and 36 are obvious in view of Severinsky and
that claims 1, 6, 7, 9, 15, and 21 are obvious based on
Severinsky in combination with Ehsani. Specifically,
Paice advances a series of interrelated arguments focus-
ing on whether Severinsky discloses the use of road load
and a setpoint to make decisions on the operating mode
and charging of the battery. We find that substantial
evidence supports the Board’s fact findings, and we dis-
cern no error in its conclusion that the claims are obvious.
16                         PAICE LLC   v. FORD MOTOR COMPANY



                             A.
     Paice first asserts that the Board erred in finding that
Severinsky 4 teaches a comparison of road load to a set-
point to determine when to operate the engine as required
by claims 1, 6, 7, 9, 15, 21, 23, and 36. According to Paice,
Severinsky’s microprocessor uses speed to make such
determinations regarding operation of the engine. There
is substantial evidence, however, to support the Board’s
determination that, although Severinsky describes the
use of speed as a factor considered by the microprocessor,
it also uses the vehicle’s torque requirements, or road
load, in determining when to operate the engine. For
example, the Board relied on the following passage from
Severinsky: “It will be appreciated that according to the
invention the internal combustion engine is run only in
the near vicinity of its most efficient operational point,
that is, such that it produces 60-90% of its maximum
torque whenever operated.” U.S. Patent No. 5,343,970
col. 20 ll. 63–67 (emphasis added); 571 Board Decision,
2015 WL 5782084, at *8. The Board found Dr. Davis’s
interpretation of this passage credible when he explained
that “[t]he lower end of the 60-90% range disclosed by
Severinsky ’970 would also be known as the proposed
‘predetermined torque value’ or ‘setpoint’ below which the
engine does not operate.” J.A. 1586, ¶ 204; 571 Board
Decision, 2015 WL 5782084, at *10. 5 The Board was
further persuaded by Dr. Davis’s testimony that Severin-
sky “is generally, if not always, using torque/road load in
its mode decisions.” 571 Board Decision, 2015 WL



     4   The Severinsky reference was incorporated into,
and shares an inventor with, the ’347 patent. ’347 patent
col. 10 ll. 37–41.
     5   Appendix citations in this section and Section IV,
infra, are to the materials from the combined joint appen-
dix in the 16-1412 and 16-1415 appeals.
PAICE LLC   v. FORD MOTOR COMPANY                         17



5782084, at *10 (quoting J.A. 3326, ¶ 19). After reviewing
the record and the Board’s analysis, we conclude that
substantial evidence supports the Board’s fact finding
that Severinsky teaches a comparison of road load to a
setpoint to determine when to operate the engine.
                             B.
    Even if Severinsky does rely on torque as a control
variable, Paice alleges that Severinsky’s discussion of the
60-90% efficient torque range refers to output torque as
opposed to input torque and, thus, the Board erred in
finding claims 1, 6, 7, 9, 15, 21, 23, and 36 obvious in view
of Severinsky or based on Severinsky in view of Ehsani.
The Board concluded that road load is an output torque,
not an input torque, “for the simple reason” that the
claims compare road load to the engine’s maximum torque
output. Id. at *11. We disagree with the Board’s reinter-
pretation of “road load” as including output torque. As we
noted above, the Board properly construed “road load” as
“the amount of instantaneous torque required to propel
the vehicle, be it positive or negative.” The Board erred
by reinterpreting the claim.
    Nonetheless, the ’347 patent itself admits that Sever-
insky discloses a torque-based control mode, stating: “an
important aspect of the invention of the [Severinsky] ’970
patent” is improving efficiency “by operating the internal
combustion engine only at relatively high torque output
levels.” ’347 patent col. 25 ll. 4–7. Although this passage
refers to output torque, the next sentence discusses the
required torque, or input torque: “[w]hen the vehicle
operating conditions require torque of this approximate
magnitude, the engine is used to propel the vehicle” and
“when less torque is required, an electric motor powered
by electrical energy stored in a substantial battery bank
drives the vehicle.” Id. at col. 25 ll. 8–13 (emphases
added). These “same advantages,” the ’347 patent notes,
are “provided by the system of the present invention.” Id.
18                         PAICE LLC   v. FORD MOTOR COMPANY



at col. 25 ll. 15–16. Accordingly, we conclude that the
Board’s finding that Severinsky relies on road load to
start and operate the engine and motor was supported by
substantial evidence.
                             C.
    Paice also argues that Severinsky does not render
claims 23 and 36 obvious because Severinsky uses speed
and the battery’s state of charge as the two criteria for
determining when to charge the battery, not road load
and the state of battery charge as recited by claim 23. 6
The claim requires an exception to the general rule of not
operating the engine when road load is less than the
setpoint; specifically, the claim requires operating the
engine when road load is less than the setpoint and “the
state of charge of said battery indicates the desirability of
doing so.” ’347 patent col. 60 ll. 46–51.
    Substantial evidence supports the Board’s finding
that Severinsky discloses this same operation. The Board
found that Severinsky, like the ’347 patent, teaches a
battery charging mode that is responsive to the state of
charge of the battery. 571 Board Decision, 2015 WL
5782084, at *12. We agree.
     At the outset, we observe that this recitation has two
components: (1) “using the torque between RL and SP to
drive said at least one electric motor;” and (2) “to charge
said battery when the state of charge of said battery
indicates the desirability of doing so.” ’347 patent col. 60
ll. 46–51. In other words, the first component evaluates
the magnitude of the torque used to charge the battery
and the second requires the state of charge to indicate the
desirability of doing so. The Board’s decision, and the


     6 The Board also rejected claim 9 and its battery
charging limitation for the same reasons as claim 23. 571
Board Decision, 2015 WL 5782084, at *13.
PAICE LLC   v. FORD MOTOR COMPANY                          19



parties’ arguments to the Board, primarily focused on the
second component of this recited feature. See 571 Board
Decision, 2015 WL 5782084, at *12 (“But the problem
with [Paice’s] argument is that the claimed invention
recites the same approach as Severinsky—using the ‘state
of charge of the battery’ to indicate when charging is
necessary.”). Yet on appeal, Paice primarily focuses on
the first component; in particular, whether Severinsky
uses the excess road load to charge the battery. During
oral argument, Paice conceded the conventional nature of
at least using excess torque to charge the battery:
   COURT: “Do you think it’s conventional, the part
   in the claim that talks about . . . the excess
   amount of energy, which is defined in the claim as
   SP minus RL, do you think . . . that part is con-
   ventional?”
   MR. CORDELL (counsel for Paice): “No because
   SP is not conventional. . . . [I]t is conventional to
   use excess torque from the engine or energy . . . it
   is conventional to use excess power to charge the
   battery because it’s free . . . .”
     Indeed, Severinsky confirms Paice’s concession that it
is conventional to use excess torque to charge the battery.
See ’970 patent col. 10 ll. 32–36 (describing a downhill
scenario in which the driver removes his foot from the
accelerator pedal and the engine’s excess torque can be
used to charge the batteries). As cited above, Paice,
however, does not concede that using the difference
between setpoint and road load is conventional. But as
Dr. Davis explained, a POSA would understand from this
passage that, even though the torque required to propel
the vehicle may be less than the setpoint because the car
is traveling downhill, the engine will continue to operate
above the setpoint and will use its excess torque to charge
the battery if the battery requires charging. J.A. 1623–
25, ¶¶ 296–97. This constitutes substantial evidence to
20                        PAICE LLC   v. FORD MOTOR COMPANY



support the Board’s finding that Severinsky discloses the
battery charging limitation in claims 23 and 36.
                            IV.
    Finally, Paice asserts that the Board erred in holding
claims 1, 7, 8, 18, 21, 23, and 37 obvious in view of the
Bumby references. Specifically, Paice asserts that the
Board lacked a motivation to combine the Bumby refer-
ences for purposes of its obviousness analysis, that the
Board impermissibly cherry-picked elements from distinct
embodiments disclosed by the Bumby references, and that
several claim limitations were not satisfied by the Bumby
references. We disagree.
    First, Paice argues that the Board did not establish a
motivation to combine the Bumby references—five arti-
cles sharing one common author—which Paice views as a
series of disparate references relating to various different
aspects of hybrid vehicle design. Motivation to combine
prior art references is a question of fact, Merck, 808 F.3d
at 833, and Paice’s arguments cannot overcome the sub-
stantial evidence relied on by the Board to support its
reasons for combining the references.
    The Board found that “the Bumby references docu-
ment, chronologically, the evolution of a hybrid vehicle
project undertaken by Professor James Bumby and his
team.” 579 Board Decision, 2015 WL 5782085, at *9.
This finding was supported by a later-published thesis by
Philip Masding—an author on two of the Bumby refer-
ences—which “brings together the five Bumby references
in a single compilation and summarizes the efforts” of
Dr. Bumby and his team. Id.
    In addition, Paice asserts that the Board erred by
combining elements from separate, allegedly incompatible
embodiments in the Bumby references without providing
a supporting rationale for the specific combination. Paice
cites Boston Scientific Scimed, Inc. v. Cordis Corp.,
PAICE LLC   v. FORD MOTOR COMPANY                        21



554 F.3d 982 (Fed. Cir. 2009) for support. In Boston
Scientific, one reference disclosed all of the asserted
claim’s elements, but those elements were taught by two
different embodiments that were pictured side-by-side in
the patent. This court nonetheless found that claim
obvious because “[c]ombining two embodiments disclosed
adjacent to each other in a prior art patent does not
require a leap of inventiveness.” Id. at 991. We also
acknowledged that as long as a POSA “can implement a
predictable variation, § 103 likely bars its patentability.”
Id. (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007)). Here, the Board combined portions of the
optimal and sub-optimal control strategies that are dis-
closed in the Bumby II and Bumby III references, each of
which provides a method for controlling the performance
of a hybrid vehicle. Bumby II acknowledges that the sub-
optimal strategy was derived from the optimal strategy by
simplifying its algorithm based on the tendencies of the
optimal strategy to select engine operation whenever an
operating point can be obtained near the high-efficiency
region. J.A. 5629–30. And Bumby III discusses these two
embodiments in sequential subsections of its “Control of
the Hybrid Electric Drivetrain” section. J.A. 5638–41.
Like the combination of two side-by-side embodiments in
Boston Scientific, we view the combination of elements
from the optimal and sub-optimal embodiments as a
“predictable variation” that does not “require a leap of
inventiveness.” Boston Sci., 554 F.3d at 991. As such, we
discern no error in the Board’s opinion.
    Paice also asserts that the Board lacked substantial
evidence to support its findings that the Bumby refer-
ences disclosed several limitations of the challenged
claims. First, Paice argues that the Bumby references do
not use road load and a setpoint to determine when and
how to charge the battery, as required by claims 1 and 23.
The Board disagreed, relying on passages from Bumby II
and Bumby V that it found “suggest that, when the torque
22                         PAICE LLC   v. FORD MOTOR COMPANY



required to propel the vehicle is less than a certain value,
or setpoint, the excess torque output of the engine is used
to charge the battery.” 579 Board Decision, 2015 WL
5782085, at *16. Dr. Davis’s expert report supported the
Board’s conclusion, see J.A. 5783–85, ¶¶ 284–86;
J.A. 5846–51, ¶¶ 438–49, and the Board also noted that
its understanding was confirmed by Dr. Davis’s deposition
testimony. Based on this record, we conclude that sub-
stantial evidence supports the Board’s finding that the
Bumby references teach the battery charging limitations
in claims 1 and 23.
    Paice also argues that the Bumby references rely on
demand power, instead of road load, as the control varia-
ble and focus on selecting the optimum gear ratio rather
than comparing road load to a setpoint. The Board con-
sidered and rejected these arguments, and its contrary
conclusions are supported by substantial evidence. Even
though demand power is an input, the Board found that
“the suboptimal control algorithm converts the instanta-
neous power and speed requirement into a torque and
speed demand.” 579 Board Decision, 2015 WL 5782085,
at *12 (quoting J.A. 5630). The Board found that the
Bumby references teach using those torque and speed
demands to select the mode of operation. Id. Indeed, the
Board reasoned that the fact that the sub-optimal control
strategy is based on a boxed region defined by upper and
lower torque and speed bounds “would have suggested to
a skilled artisan a setpoint that utilizes torque as a factor
in determining the operational mode.” Id. at *11. Moreo-
ver, the Board relied on passages from the Bumby refer-
ences that expressly disclose calculations to determine the
required torque at the wheels (albeit in the optimal con-
trol strategy), and on Dr. Davis’s expert report, which
“confirm[ed] that a skilled artisan would have understood
these references as speaking to the road load required to
propel the vehicle.” Id. at *13.
PAICE LLC   v. FORD MOTOR COMPANY                    23



                        CONCLUSION
    We have considered Paice’s remaining arguments and
find them unpersuasive. For the reasons stated above,
the Board’s claim constructions were not erroneous and
substantial evidence supports the Board’s fact findings
and legal conclusions in holding the challenged claims
invalid on obviousness grounds. Accordingly, we affirm
the Board’s decisions in the appealed IPRs.
                        AFFIRMED
                           COSTS
    Costs to Appellees.
      NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
               ______________________

  PAICE LLC, THE ABELL FOUNDATION, INC.,
                 Appellants

                          v.

            FORD MOTOR COMPANY,
                     Appellee
              ______________________

                2016-1412, 2016-1415
               ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2014-00571, IPR2014-00579.

     -----------------------------------

  PAICE LLC, THE ABELL FOUNDATION, INC.,
                 Appellants

                          v.

            FORD MOTOR COMPANY,
                     Appellee
              ______________________

                     2016-1745
               ______________________
2                         PAICE LLC   v. FORD MOTOR COMPANY



    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00884.
                 ______________________

STOLL, Circuit Judge, dissenting-in-part.
     I respectfully dissent with respect to Section III.C on
the ground that there is no substantial evidence to sup-
port the Board’s conclusion that claims 9, 23, and 36
would have been obvious in view of Severinsky. The
Board’s decision does not adequately explain its bases for
concluding that Severinsky teaches “employing said
engine to propel said vehicle when the torque RL required
to do so is less than said lower level SP and using the
torque between RL and SP to drive said at least one
electric motor to charge said battery when the state of
charge of said battery indicates the desirability of doing
so,” ’347 patent col. 60 ll. 46–52, as required by claims 23
and 36. Nor has the Board provided sufficient rationale
to support its conclusion that Severinsky teaches claim 9’s
specific requirement of “a low-speed battery charging
mode II.” Id. at col. 59 ll. 13–24.
