      NOTE: This disposition is nonprecedential.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
              ______________________

2017-1263, 2017-1264, 2017-1308, 2017-1309, 2017-1310,
                      2017-1311
               ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-00722,     IPR2015-00784,     IPR2015-00787,
IPR2015-00790, IPR2015-00791, IPR2015-00800.

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

  PAICE LLC, THE ABELL FOUNDATION, INC.,
                 Appellants

                               v.

            FORD MOTOR COMPANY,
                     Appellee
              ______________________

                 2017-1442, 2017-1443
2                          PAICE LLC   v. FORD MOTOR COMPANY



                  ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-00794, IPR2015-00795.
                ______________________

                 Decided: February 1, 2018
                  ______________________

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

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

Before LOURIE, O’MALLEY, and TARANTO, Circuit Judges.
    Opinion for the court filed by Circuit Judge TARANTO.
      Opinion dissenting in part filed by Circuit Judge
                        O’MALLEY.
TARANTO, Circuit Judge.
    U.S. Patent Nos. 7,237,634 and 7,104,347, which are
owned by Paice LLC and The Abell Foundation (collec-
tively, Paice), describe and claim asserted improvements
in a hybrid vehicle—a vehicle that has available for
propulsion both a battery-powered electric motor and an
internal combustion (gas) engine. At Ford’s request, the
Patent and Trademark Office instituted inter partes
reviews of various claims of the two patents under 35
U.S.C. §§ 311–19. The Patent Trial and Appeal Board
PAICE LLC   v. FORD MOTOR COMPANY                           3



ultimately held numerous claims of the two patents
unpatentable. Paice appeals. We affirm.
                              I
     The ’634 and ’347 patents describe a control strategy,
based on the torque needed for propulsion, for switching
between different modes of operating a hybrid vehicle—
use of (one or more) electric motors, a gas engine, or both.
The subject matter has been discussed in previous deci-
sions of this court. See Paice LLC v. Ford Motor Co., 681
F. App’x 885, 887–88 (Fed. Cir. 2017) (Paice I) (involving
Paice’s related U.S. Patent No. 7,559,388); Paice LLC v.
Ford Motor Co., 681 F. App’x 904, 908–09 (Fed. Cir. 2017)
(Paice II) (involving the ’347 patent); Paice LLC v. Ford
Motor Co., 685 F. App’x 940, 943 (Fed. Cir. 2017) (Paice
III) (involving Paice’s related U.S. Patent No. 8,214,097);
see also Paice LLC v. Ford Motor Co., 685 F. App’x 950
(Fed. Cir. 2017) (Paice IV) (summary affirmance of Board
decisions involving the ’634 patent). 1 We recite here only
the background necessary to resolve the issues on appeal.
    The common specification explains that the control
strategy bases selection decisions on instantaneous torque
demand, or “road load.” ’634 patent, col. 13, lines 12–21,
44–65. 2 Because the gas engine runs most efficiently
when it produces torque near its maximum torque output,



    1   Related subject matter is also at issue in appeals
17-1387, 17-1388, 17-1390, 17-1457, 17-1458, and 17-
1406, which were argued in tandem with the present
appeals.
    2   The ’634 patent issued from a divisional applica-
tion, under 35 U.S.C. § 121, of the application that issued
as the ’347 patent. Because the patent specifications are
identical in all material respects, this opinion cites only to
the ’634 patent, and to the materials submitted in appeal
17-1263, unless specifically noted otherwise.
4                          PAICE LLC   v. FORD MOTOR COMPANY



the control strategy is designed to operate the engine
“only under circumstances where the engine will be
loaded so as to require at least 30% of its maximum
torque output (‘MTO’) (it being understood throughout
this specification and the appended claims that this 30%
figure [setpoint] is arbitrary and can be varied).” Id., col.
13, lines 14–29, 44–65; see also id., col. 2, lines 58–60.
Generally, the electric motor alone is used to run the
vehicle below the 30% setpoint, the gas engine is used to
run the vehicle in the “efficien[t]” range of 30% to 100% of
the engine’s maximum torque output, and both propulsion
sources are used to run the engine when more than 100%
of the gas engine’s maximum torque output is required
(the electric motor providing the additional torque re-
quired). Id., col. 41, line 59 through col. 43, line 25 &
Fig. 9.
    The relevant claims of the Paice patents require two
comparisons—of the vehicle’s road load to a setpoint, and
of the vehicle’s road load to the gas engine’s maximum
torque output—for the decision whether to operate the
electric motor, the gas engine, or both. Independent claim
80 of the ’634 patent is representative. 3 That claim reads:
       80. A method for controlling a hybrid vehicle,
    comprising:
        determining instantaneous road load (RL) re-
            quired to propel the hybrid vehicle respon-
            sive to an operator command;
        monitoring the RL over time;


    3   In appeals 17-1442 and 17-1443, the parties treat
claims 1 and 23 of the ’347 patent as representative.
Those claims are materially identical to claim 80 of the
’634 patent. Compare ’634 patent, col. 65, lines 11–33
with ’347 patent, col. 58, lines 13–37 and id., col. 60, lines
22–54.
PAICE LLC   v. FORD MOTOR COMPANY                           5



        operating the at least one electric motor to
            propel the hybrid vehicle when the RL re-
            quired to do so is less than a setpoint (SP);
        operating the internal combustion engine of
            the hybrid vehicle to propel the hybrid ve-
            hicle when the RL required to do so is be-
            tween the SP and a maximum torque
            output (MTO) of the engine, wherein the
            engine is operable to efficiently produce
            torque above the SP, and wherein the SP
            is substantially less than the MTO; and
        wherein said operating the internal combus-
           tion engine to propel the hybrid vehicle is
           performed when:
             the RL>the SP for at least a predeter-
                mined time; or
             the RL>a second setpoint (SP2), wherein
                 the SP2 is a larger percentage of the
                 MTO than the SP; and
        operating both the at least one electric motor
            and the engine to propel the hybrid vehi-
            cle when the torque RL required to do so is
            more than the MTO.
’634 patent, col. 65, lines 11–33. 4



    4   In IPR2015-00791, the Board dismissed the chal-
lenge to claim 80 from the inter partes review because
that claim had been held unpatentable in an earlier
Board decision, Ford Motor Co. v. Paice LLC, No.
IPR2014-01416, 2016 WL 932948, at *1 (P.T.A.B. Mar. 10,
2016), aff’d, Paice IV, 685 F. App’x 950. Though not at
issue here, claim 80 contains the relevant limitations and
is representative of the claims on appeal.
6                         PAICE LLC   v. FORD MOTOR COMPANY



    In the final written decisions in seven inter partes re-
views, the Board determined that the following claims—
claims 2–4, 6–13, 15, 17, 19, 23, 25, 27–30, 32, 66–67, 79,
94, 96, 106–08, 113, 128, 140–41, 146, 173, 229, 231, 238–
41, 252–56, 259, 261–62, 267, 281–82, 285, and 287–88 of
the ’634 patent; and claims 3–5, 14, 16, 19–20, 22, 25–30,
32, and 39–41 of the ’347 patent—are unpatentable for
obviousness over U.S. Patent No. 5,789,882 (Ibaraki),
either alone or in combination with other references. 5
The Board’s decision in IPR2015-00722, on appeal here in
17-1263, is representative. Ford Motor Co. v. Paice LLC,
IPR2015-00722, 2016 WL 5636817 (P.T.A.B. Sept. 26,
2016) (IPR 722 Final Written Decision).
    On appeal pursuant to 35 U.S.C. § 319, Paice chal-
lenges those Board decisions, under 5 U.S.C. § 706(2)(E),
as not supported by substantial evidence. We have juris-
diction under 28 U.S.C. § 1295(a)(4)(A).
                             II
    We review the Board’s factual findings underlying its
obviousness determinations for substantial evidence,
which “means such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.”
TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1061 (Fed.




    5   In the eighth Board decision on appeal (involving
IPR2015-00800), the Board determined that claims 172,
226, 230, and 234 of the ’634 patent are unpatentable for
obviousness over a series of articles written by J.R. Bum-
by. We are unpersuaded by Paice’s arguments on appeal
challenging that determination. We affirm the decision
without further discussion, except to note that in Paice II,
681 F. App’x at 917–18, we affirmed the Board’s determi-
nation of unpatentability of similar claims in Paice’s ’347
patent based on obviousness over the Bumby references.
PAICE LLC   v. FORD MOTOR COMPANY                         7



Cir. 2016) (quoting Consol. Edison Co. v. NLRB, 305 U.S.
197, 229 (1938)).
                             A
    Paice’s main argument is that the Board’s finding
that Ibaraki discloses torque-based comparisons is not
supported by substantial evidence. We disagree.
     As the Board correctly found, IPR 722 Final Written
Decision, 2016 WL 5636817, at *7, Ibaraki describes a
hybrid vehicle with “a drive control apparatus” (control-
ler) that, like the microprocessor in the ’634 and ’347
patents, “includes drive source selecting means” for
selecting the engine, motor, or both. Ibaraki, col. 1, lines
10–13; id., col. 20, lines 38–43. The controller makes the
selection “according to a drive source selecting data map,”
illustrated in Figure 11 (below), “which represents a
predetermined relationship between the vehicle drive
torque and running speed V and the . . . three drive
modes” of motor drive (electric motor only), engine drive
(gas engine only), and engine-motor drive (both). Id., col.
20, lines 38–53.




“[W]hen the vehicle running condition as represented by
the current vehicle drive torque and speed” falls in the
area below curve B, the controller selects motor drive
8                            PAICE LLC   v. FORD MOTOR COMPANY



mode. Id., col. 20, line 55–62; see also id., col. 21, lines 2–
4 (B can be shifted from B1 to B2 to enlarge the motor
drive range, if such a condition is desired). Similarly, the
controller selects engine drive mode when the running
condition falls in the area between curve B and curve C,
and engine-motor drive mode in the area above curve C.
Id., col. 20, line 55 through col. 21, line 1; id., col. 24, lines
16–21 & Fig. 10. 6
    Paice does not dispute the finding that Ibaraki teach-
es comparisons to setpoints to select engine, motor, or
engine-motor operation. In Figure 11, curve B and curve
C each is a constant level of power, and the flowchart in
Ibaraki’s Figure 10 expressly refers to a power compari-
son (“PL > B?”; “PL > C?”) for selecting the mode of opera-
tion. Precisely because that comparison employs power,
however, Paice argues that Ibaraki’s controller does not
base mode selection on comparisons to torque, as required
by the patent claims.
    The question before us is not whether the Board
might properly have accepted Paice’s contention about the
teachings of Ibaraki. The question is whether the Board
had an adequate evidentiary basis for its contrary finding.
The Board found that Ibaraki teaches reliance on both
power and torque; it thus rejected Paice’s contention that
one teaching excludes the other. IPR 722 Final Written


    6   Ibaraki at col. 20 line 66 through col. 21, line 1,
states that “[w]hen the vehicle running condition is in the
range above the second boundary line C, the drive source
selecting means [] selects the ENGINE-DRIVE mode.”
Based on context and Figure 10, that appears to be a
typographical error: the passage should say “ENGINE-
MOTOR DRIVE mode.” Paice does not dispute that
Ibaraki discloses that if the power level is greater than
curve C, “the vehicle is driven in ‘Engine-Motor Drive
Mode.’” Paice Br. 20.
PAICE LLC   v. FORD MOTOR COMPANY                         9



Decision, 2016 WL 5636817, at *7–12. We conclude that
the Board’s finding is reasonable on this record.
    Ford’s expert Dr. Gregory Davis pointed out that
“Ibaraki [] states that the ‘vehicle drive torque and speed’
determine ‘a point corresponding to the required drive
power PL.” J.A. 16133 (quoting Ibaraki, col. 23, line 66
through col. 24, line 2 (explaining that in Figure 10’s
flowchart of controller decisionmaking, step Q8 is where
the controller “determine[s] whether a point correspond-
ing to the required drive power PL (determined by the
current vehicle drive torque and speed V) is located above
the first boundary line B.”)). It is undisputed that the
relationship between the required drive power PL, torque,
and speed is PL = torque x speed, which makes each of
curve B and C in Figure 11’s graph of torque x speed a
constant power level. Dr. Davis explained that any par-
ticular point on one of the Figure 11 curves (e.g., on B or
on C) relates to a “required drive power PL at a given
vehicle drive torque and vehicle speed.” J.A. 16133 (in-
ternal quotation marks omitted).
     To show how Ibaraki’s controller makes operation de-
cisions based on torque comparisons at a given speed, Dr.
Davis provided an annotated version of Figure 11, shown
at IPR 722 Final Written Decision, 2016 WL 5636817, at
*8:
10                         PAICE LLC   v. FORD MOTOR COMPANY




That figure illustrates Dr. Davis’s reading of Ibaraki as
teaching selection decisions based on torque. At a given
speed (V1), the selection decision is based on where on the
torque axis the desired torque is: Ibaraki selects motor
drive mode at TL1, engine drive mode at TL2, and engine-
motor drive mode at TL3. The comparisons of desired
torque are to the torque levels on curves B and C at speed
V1, i.e., SP (set point) on curve B and C1 on curve C.
    The Board relied on Ibaraki and the knowledge of a
person of skill in the art, as explained by Dr. Davis, to
find that power is directly related to torque, that Ibaraki’s
controller determines the required drive power based on
the current vehicle drive torque and speed, and that
Ibaraki teaches selection decisions dependent on torque
(though not only on torque)—specifically, on torque levels
at a given speed. See IPR 722 Final Written Decision,
2016 WL 5636817, at *8–9, *13–14. 7 The Board had a


     7  Similarly, in the ’634 patent, as the Board pointed
out, speed may also be “considered in determining the
mode of operation of the vehicle”: the patent “contem-
plates including not just the torque value in the [setpoint]
comparison, but also speed.” IPR 722 Final Written
PAICE LLC   v. FORD MOTOR COMPANY                          11



sufficient basis for rejecting Paice’s reading of Ibaraki as
not teaching torque-based comparisons.
    The Board also had a sufficient basis for rejecting a
related contention made by Paice—that, even if Ibaraki
shows torque-based comparisons, it does not show com-
paring the vehicle’s required torque to the engine’s “max-
imum torque output” and using both propulsion sources
when the required torque exceeds that level, as required
by the patent claims. Dr. Davis explained that a person of
skill in the art would know the following: curve C of
Ibaraki’s Figure 11 is less than or equal to the engine’s
maximum torque output (the engine, alone, is running
just below that curve); the motor is turned on to provide
additional torque above curve C; and “‘a hybrid vehicle
control strategy would at some point allow the [internal
combustion] engine to provide output torque near and
potentially including its [maximum torque output].
Otherwise, the system would be artificially limiting the
performance of the vehicle.’” Id. at *11 (quoting Dr.
Davis’s declaration). The Board was persuaded. It found
that Ibaraki, combined with the knowledge of a person of
ordinary skill in the art, taught the Paice claim limitation



Decision, 2016 WL 5636817, at *14 (citing ’634 patent,
Fig. 4 & col. 59, lines 3–5 (dependent claim 12 recites “the
hybrid vehicle of claim 1, wherein the controller is opera-
ble to vary the SP as a function of speed of the engine”);
cf. ’634 patent, col. 58, lines 19–27 (claim 1 requirement
that the controller, among other things, “is operable to
operate the engine when torque . . . is at least equal to a
setpoint (SP) above which the torque produced by the
engine is efficiently produced”). See also id., col. 19, lines
63–65 (“The vehicle is operated in different modes, de-
pending on its instantaneous torque requirements, and
the state of charge of the battery, and other operating
parameters.”).
12                        PAICE LLC   v. FORD MOTOR COMPANY



that both the engine and motor be used to propel the
vehicle above the engine’s maximum torque output. Id. at
*11–12. Dr. Davis’s testimony supplies an adequate basis
for that finding.
    We note that, in the alternative, the Board found that
“operating the engine and motor when the torque [road
load] required to do so is more than the [maximum torque
output] . . . would have been an obvious modification to
make to the Ibaraki [] control system.” Id. at *14 (inter-
nal quotation marks omitted). We agree with that deter-
mination on the evidence-supported facts found by the
Board.
                            B
    Paice also challenges the Board’s finding that Ibaraki
discloses the claim requirement of a setpoint that is
“substantially less” than the engine’s maximum torque
output—the engine alone operating when the required
torque is between those figures. See IPR 722 Final Writ-
ten Decision, 2016 WL 5636817, at *10. It is undisputed,
based on claim 15 of the ’634 patent, that approximately
70% of the maximum torque output constitutes being
“substantially less” than the maximum torque output. Id.
The Board found that this limitation was shown in
Ibaraki, relying on the explanation of Dr. Davis that it
would be “clear” to a person of skill, based upon a “simple
visual inspection” of Figure 11, “that setpoint SP [along
curve B1] is substantially less than point C1 [along curve
C],” and therefore substantially less than the maximum
torque output (which, for reasons already noted, is at or
above curve C). J.A. 16157–58; see IPR 722 Final Written
Decision, 2016 WL 5636817, at *10, *15.
    Paice argues that Dr. Davis’s reliance on visual in-
spection of Figure 11 is improper under Hockerson-
Halberstadt, Inc. v. Avia Group International, Inc., in
which this court explained “that patent drawings do not
define the precise proportions of the elements and may
PAICE LLC   v. FORD MOTOR COMPANY                        13



not be relied on to show particular sizes if the specifica-
tion is completely silent on the issue.” 222 F.3d 951, 956
(Fed. Cir. 2000); see also In re Olson, 212 F.2d 590, 592
(C.C.P.A. 1954) (“Ordinarily drawings which accompany
an application for a patent are merely illustrative of the
principles embodied in the alleged invention claimed
therein and do not define the precise proportions of ele-
ments relied upon to endow the claims with patentabil-
ity.”).   The Hockerson-Halberstadt case involved a
rudimentary drawing that portrayed a central groove
bisecting the heel on the sole of a shoe to create fins
flanking the groove, 22 F.3d at 953, and there was no
indication that the groove and fins were drawn to scale,
id. at 956. That drawing, this court held, could not rebut
statements in the prosecution history that clarified the
relative measurements because “the inventor necessarily
defined the central longitudinal groove as requiring a
width that must be less than the combined width of the
two fins.” Id. at 956.
    This case is not controlled by Hockerson-Halberstadt.
Unlike the drawing at issue there, Figure 11 of Ibaraki
provides some scale information—which expert evidence
reasonably found telling on the point at issue. It specifies
0 at the intersection of the x- and y-axes, both of which
run continuously, without indication of omission of por-
tions of the range, from 0 to higher levels; and consistent
with the shape of each curve (a rectangular hyperbola),
the parties’ experts both treated the scale of the axes as
linear—allowing Dr. Davis to make rough estimates
based on relative comparisons between the torque values
located on the B and C curves. 8 In any event, the visual



   8    At oral argument, counsel for Paice suggested
that it was unclear whether the curves were plotted along
a linear or logarithmic scale. But Paice’s own expert
assumed that the scales of the x- and y-axes were linear
14                        PAICE LLC   v. FORD MOTOR COMPANY



inspection of the curves is not the sole support for the
Board’s finding. The Board also found that, based on Dr.
Davis’s declaration, a person of skill would understand
the B curve to be “substantially less” than the maximum
torque output because, otherwise, the controller would
rarely select the engine alone to propel the vehicle. IPR
722 Final Written Decision, 2016 WL 5636817, at *15.
According to Dr. Davis, it would not make sense to a
person of skill for a hybrid vehicle to “hardly” operate the
engine as the primary drive source. J.A. 16154–55.
Ibaraki’s Figure 11, in combination with the understand-
ing of a person of skill, thus provides substantial evidence
for the Board’s finding that Ibaraki teaches the “substan-
tially less” claim element at issue.
                             C
    For those reasons, and having considered Paice’s re-
maining arguments and found them insufficient to dis-
turb the Board’s rulings, we affirm the final written
decisions of the Board.
                       AFFIRMED




for the power curves in Figure 11. See J.A. 16492. That
makes sense mathematically: as Dr. Davis explained, the
curves “‘represent[] a predetermined relationship between
the vehicle drive torque and running speed V,’” J.A. 16131
(quoting Ibaraki, col. 20, lines 49–53)—namely, “Power =
Torque * Rotational Speed,” J.A. 16133. A linear scale
along both axes would produce the rectangular hyperbola
curves—for constant power level P = x * y—as depicted in
Figure 11.
      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
              ______________________

2017-1263, 2017-1264, 2017-1308, 2017-1309, 2017-1310,
                      2017-1311
               ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-00722,     IPR2015-00784,     IPR2015-00787,
IPR2015-00790, IPR2015-00791, IPR2015-00800.

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

  PAICE LLC, THE ABELL FOUNDATION, INC.,
                 Appellants

                               v.

            FORD MOTOR COMPANY,
                     Appellee
              ______________________

                 2017-1442, 2017-1443
2                         PAICE LLC   v. FORD MOTOR COMPANY



                 ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-00794, IPR2015-00795.
                ______________________

O’MALLEY, Circuit Judge, dissenting in part.
    I agree with the majority that substantial evidence
supports the Board’s finding that the Bumby references
render obvious certain claims of the ’634 and ’347 patents,
and I therefore join the majority opinion as it relates to
those references. See Maj. Op. at 6 n.5. I disagree, how-
ever, with the majority’s conclusion that substantial
evidence supports the Board’s finding that Ibaraki dis-
closes a torque-based control algorithm, and I dissent
from the portion of the majority opinion affirming the
Board’s obviousness determinations based on Ibaraki.
See id. at 7–14.
    Ibaraki discloses a power-based control algorithm, not
a torque-based one. Figure 10 of Ibaraki depicts that
algorithm and shows, in steps Q8 and Q9, that the system
compares the vehicle’s instantaneous power, “PL,” with
power thresholds “B” and “C” to determine which operat-
ing mode to select:
PAICE LLC   v. FORD MOTOR COMPANY                          3




Ibaraki, Fig. 10 (steps Q8, Q9); id. col. 23, line 66 through
col. 24, line 38 (stating that the driving mode of the
vehicle is selected “depending upon the required drive
power PL”); see also No. 17-1263, J.A. 16,467–68 (Paice’s
expert describing Ibaraki’s Figure 10). This is consistent
with Ibaraki’s Figure 11, which shows a series of power
curves corresponding to the threshold values depicted in
Figure 10, plotted against the vehicle drive torque (y-axis)
and vehicle speed (x-axis), as shown below:
4                        PAICE LLC   v. FORD MOTOR COMPANY




Ibaraki, Fig. 11. Each curve has a non-zero slope and
delineates operating modes. As Paice’s expert testified—
and as the majority acknowledges, see Maj. Op. at 8–9—
the curves represent constant levels of power, not set-
points of constant torque. See No. 17-1263, J.A. 16,471–
72; Ibaraki, col. 20, line 38 through col. 21, line 4.
    As Paice’s expert explained, the difference between
Ibaraki’s power-based system and the ’634 and ’347
patents’ torque-based system is significant. See No. 17-
1263, J.A. 16,470–71. A single power value can be de-
rived from multiple combinations of torque and speed, as
Ibaraki’s Figure 11 plainly shows. Indeed, because power
is the product of torque and speed, a large number of
unique torque-speed pairs can be used to calculate the
same power. For example, a vehicle requiring a large
torque to maintain a low speed might have the same
power requirement as a vehicle requiring a small torque
to maintain a high speed. Because Ibaraki is concerned
only with power, its algorithm would presumably select
the same operating mode in both instances. This is in
stark contrast to the ’634 and ’347 patents, which require
PAICE LLC   v. FORD MOTOR COMPANY                             5



the claimed vehicle to operate in different modes when the
vehicle’s torque requirements are different. See ’634
patent, col. 12, line 49 through col. 13, line 4; id. col. 17,
lines 45–50; id. col. 18, lines 35–40; id. col. 19, lines 45–
57; id. col. 35, lines 63 through col. 36, line 43; id. col. 38,
lines 9–22, 51–54.
    In reaching a contrary conclusion, the Board placed
significant weight on Ford’s expert’s testimony that, at a
particular speed, Ibaraki determines which operating
mode to select based solely on torque. See Ford Motor Co.
v. Paice LLC, IPR2015-00722, 2016 WL 5636817, at *9
(P.T.A.B. Sept. 26, 2016) (IPR 722 Final Written Deci-
sion). In his declaration, Ford’s expert selected an arbi-
trary speed in Ibaraki’s Figure 11, “V1,” and determined
the torque value, “SP,” of Ibaraki’s power curve B1 corre-
sponding to that speed:




Id.; see also No. 17-1263, J.A. 7255 (Ford’s expert testify-
ing that B1 is “one particular setpoint . . . at [a] particular
vehicle speed”). Ford’s expert then concluded that Ibaraki
teaches which operating mode to select at the designated
speed based on whether the torque is greater than or less
than the corresponding “SP” torque value. In other
words, Ford’s expert’s analysis—which the Board adopted
as its own—was predicated on his evaluating Ibaraki’s
Figure 11 at a particular speed. This analysis is flawed
6                           PAICE LLC   v. FORD MOTOR COMPANY



for several reasons, and thus lends no support to the
Board’s findings with regard to Ibaraki.
    First, it is not grounded in—and, in fact, is incon-
sistent with—Ibaraki’s disclosure. Nothing in Ibaraki
suggests that its controller makes operating mode deci-
sions by considering the torque at a particular speed. To
the contrary, as described above, Ibaraki discloses making
such determinations by considering power. The Board’s
analysis, which attempts to separate out the torque and
speed components from Ibaraki’s power parameter, finds
insufficient support in Ibaraki itself.
    Second, the Board’s analysis is inconsistent with the
’634 and ’347 patent claims and specifications. Neither
the claims nor the specifications justify comparing road
load to the setpoint at a particular speed. In fact, the
claims at issue are silent as to speed, which makes sense
in view of the patents’ statements that road load is “inde-
pendent of vehicle speed.” ’634 patent, col. 12, lines 55–
61; see also id. col. 65, lines 16–30 (claim 80 referring to “a
setpoint” and “the setpoint,” not multiple setpoints to
account for different speeds). 1 Further, the patents’
Figure 7(a) shows that the operating mode decisions are




    1   Claim 12 of the ’634 patent and claim 5 of the ’347
patent specify that the setpoint may be varied “as a
function of speed of the engine,” ’634 patent, col. 59, lines
3–5, but the claims at issue lack such a limitation, sug-
gesting that the setpoints in the claims are not varied as a
function of speed.
PAICE LLC   v. FORD MOTOR COMPANY                              7



based only on the road load torque, and not on speed:

Id. at Fig. 7; id. col. 38, line 62 through col. 39, line 40; see
also id. Fig. 9. This figure shows that the electric-motor-
only mode is selected when the road load is between 0 and
30% of maximum torque output, the engine-only mode is
selected when the road load is between 30% and 100% of
maximum torque output, and the hybrid mode is selected
when the road load is above 100% maximum torque
output. Noticeably missing from the figure and accompa-
nying description in the specifications is any reference to
speed’s role in the algorithm. Thus, Ford’s expert’s analy-
sis of whether Ibaraki renders the claims at issue obvious
is inconsistent with the ’634 and ’347 patent claims and
specifications, and, as such, is not entitled to deference.
See Homeland Housewares, LLC v. Whirlpool Corp., 865
F.3d 1372, 1378 (Fed. Cir. 2017) (noting, in an appeal
from an IPR, that “we must disregard the testimony of an
expert that is plainly inconsistent with the record, or
based on an incorrect understanding of the claim[s]”
(citations and internal quotation marks omitted)).
    Third, the Board’s analysis is circular. By holding
speed constant, the Board removed speed from the analy-
sis altogether and concluded—unsurprisingly—that
torque is the relevant input parameter in Ibaraki’s control
algorithm. 2 The Board’s analysis is therefore results-
oriented to the extent it assumes the very conclusion it
purports to reach.
    Finally, the Board found that, because “‘power’ is de-
termined as the multiplicative product of ‘torque’ and
‘speed,’” Ibaraki’s power-based comparison “necessarily


    2   As Paice’s expert testified, one could just as easily
hold torque constant and conclude that Ibaraki’s control
system determines which mode to select at that torque
based solely on speed. See No. 17-1263, J.A. 16,473–74.
8                         PAICE LLC   v. FORD MOTOR COMPANY



makes a comparison with regard to the torque value
associated with the selected power point . . . , regardless
of whether a comparison also is made with respect to
speed.”    IPR 722 Final Written Decision, 2016 WL
5636817, at *13; see also id. at *14 (“[T]he point corre-
sponding to the required drive power PL of Figure 11 . . .
satisfies the claimed road load, because PL includes
torque.”). This quasi-inherency finding is unsupported by
substantial evidence. The mere fact that power and
torque are mathematically related does not imply that a
comparison with one involves a comparison with the
other. While the Board’s constructions of “road load” and
“setpoint” do not exclude independently making compari-
sons based on torque and speed, those constructions do
not include making a comparison based on power—a
parameter that is entirely different from torque, as Ford
itself admits, see Appellee’s Br. 46—merely because power
can be derived from torque.
    Indeed, the patents emphasize that their torque-based
algorithm is the crux of the invention and is what distin-
guishes the invention over the prior art. See ’634 patent,
col. 13, lines 13–21 (stating that the prior art fails to
“recognize[] that the desired vehicle operational mode
should preferably be controlled in response to the vehicle’s
actual torque requirements, i.e., the road load” so as to
“provide[] superior performance[] . . . under the widely-
varying conditions encountered in ‘real world’ driving
situations”). The Board’s obviousness analysis, however,
effectively reads the torque-based nature of the invention
out of the claims altogether. To the extent the Board’s
obviousness determination is predicated on constructions
of “road load” and “setpoint” that permit comparisons
involving power demand, those constructions are unrea-
sonably broad. See In re Smith Int’l, Inc., 871 F.3d 1375,
1382–83 (Fed. Cir. 2017) (stating that “the Board cannot
construe the claims so broadly that its constructions are
unreasonable under general claim construction princi-
PAICE LLC   v. FORD MOTOR COMPANY                       9



ples,” and that giving claims terms “a strained breadth in
the face of . . . otherwise different description in the
specification [is] unreasonable” (internal quotation marks
omitted)); TriVascular, Inc. v. Samuels, 812 F.3d 1056,
1062 (Fed. Cir. 2016) (“While the broadest reasonable
interpretation standard is broad, it does not give the
Board an unfettered license to interpret the words in a
claim without regard for the full claim language and the
written description.”).
    For these reasons, I believe that the Board’s finding
that Ibaraki discloses a torque-based control system is
unreasonable and unsupported by substantial evidence.
And, because the Board did not make an alternative
finding that a torque-based system would be an obvious
modification of a power-based system, I would reverse the
Board’s obviousness determinations as to all claims for
which Ibaraki was used as the primary reference. I
respectfully dissent from the majority’s contrary holding.
