# United States **Court of Appeals**  **for the Federal Circuit**

______________________ PAICE LLC, THE ABELL FOUNDATION, IN C., Appellants

v.

FORD MOTOR COMPANY, Appellee

______________________

2017

- 1387, 2017

- 1388, 2017

- 1390, 2017

- 1457, 2017

- 1458

______________________ Appeals from the United States Patent and Trad emark Office, Patent Trial and Appeal Board in No s

. IPR2015

- 00606, IPR2015

- 00758, IPR2015

- 00785, IPR2015

- 00799, IPR2015

- 00801.

-----------------------------------------------
PAICE LLC, THE ABELL FOUNDATION, IN C., Appellants

v.

FORD MOTOR COMPANY, Appellee

______________________

2017

- 1406

______________________PAICE LLC v. FORD MOTOR COMPANY 2

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2015

- 00792.

______________________
Decided: February 1, 2018

______________________

R UFFIN B. C ORDELL , Fish & Richardson, PC, Washin gton, DC, argued for appellants. Also represented by T IMOTHY W. R IFFE , B RIAN J AMES L IVEDALEN , D ANIEL T ISHMAN

.

G ABRIEL B ELL , Latham & Watkins LLP, Washington, DC, argued for appellee. Also represented by M ATTHEW J. M OORE ; F RANK A. A NGILERI , S ANGEETA G. S HAH , J OHN P. R ONDINI , A NDREW B. T URNER , Brooks Kushman PC, Southfield, MI.

______________________

Before L OURIE , O’M ALLEY , and T ARANTO , Circuit Judges.

O’M ALLEY , Circuit Judge.

Paice LLC and The Abell Foundation, Inc. (collectiv ely, “Paice”) appeal from f inal written d ecisions in six inter partes review (“IPR”) proceedings, in which the Patent Trial and Appeal Board (“Board”) held certain challenged claims of U.S. Patent Nos. 7,237,634 (“’634 patent”) and 8,214,097 (“’097 patent”) unpatentable. 1 For the followi ng

1 See Ford Motor Co. v. Paice LLC , IPR2015

- 00606, Paper No. 33 (P.T.A.B. Nov. 8, 2016) ( 606 IPR ); Ford Motor Co. v. Paice LLC , IPR2015

- 00758 , Paper No. 28 (P.T.A.B. Nov. 8, 2016) ( 758 IPR ); Ford Motor Co. v. Paice LLC , IPR2015

- 00785 , Paper No. 31 (P.T.A.B. Oct. 21, 2016) ( 785 IPR ); Ford Motor Co. v. Paice LLC

, IPR2015

- 00792 , Paper No. 30 (P.T.A.B. Oct. 25, 2016) ( 792 IPR );PAICE LLC v. FORD MOTOR COMPANY 3

reasons, we affirm in part, vacate in part, and remand . In particular, we vacate the Board’s obviousness determin ations as they relate to the ’634 patent’s “electrical” claims and remand for the Board to determine whether those claims find written description support in the priority applications and the references incorporated therein. We affirm the Board’s obviousness determinations as to all other claims.

I. F ACTUAL B ACKGROUND
A. The ’634 and ’097 Patents The subject matter of the ’634 and ’ 097 patents has been discussed in considerable detail in previous decisions of this court. See Paice LLC v. Ford Motor Co. , 681 F. App’x 885, 887

– 88 (Fed. Cir. 2017) ( Paice I ) (involving related patent ); Paice LLC v. Ford Motor Co. , 681 F. App’x 904, 908 (Fed. Cir. 2017) ( Paice II ) (involving related patent); Paice LLC v. Ford Motor Co.

, 685 F. App’x 940, 943 (Fed. Cir. 2017) ( Paice III ) (involving ’ 097 patent ); see also Paice LLC v. Ford Motor Co. , 685 F. App’x 950 (Fed. Cir. 2017) ( Paice IV ) (summary affirmance of Board decision involving the ’634 patent). 2 We recite here only the back ground necessary to resolve the issues on appeal.

Paice’s related ’634 and ’097 patents

, both titled “H ybrid Vehicles

, ” are directed to a torque

- based algorithm for selecting operating modes in a hybrid vehicle having

an internal combustion engine and one or more battery

-

Ford Motor Co. v. Paice LLC , IPR2015

- 00799 , Paper No. 30 (P.T.A.B. Nov. 8, 2016) ( 799 IPR ); Ford Motor Co. v. Paice LLC , IPR2015

- 00801 , Paper No. 28 (P.T.A.B. Oct. 21, 2016) ( 80 1 IPR ).

2 Rela ted subject matter is also at issue in appeals 17

- 1263, 17

- 1264, 17

- 1308, 17

- 1309, 17

- 1310, 17

- 1311, 17

- 1442, and 17

- 1443, which were argued in tandem with the present appeals.PAICE LLC v. FORD MOTOR COMPANY 4

powered electric motor s. The claims at issue generally recite methods for comparing the instantaneous torque required to propel the vehicle, which the patent s refer to as “road load” (“RL”), to both a set point (“SP”) and the engine’s maximum torque output (“MTO”) to determine whether to operate the engine, the electric motor, or both. ’634 patent, col. 3, ll. 12

– 21; id. col. 13, ll. 1 2– 29, 44

– 65; id. col. 41, l. 4 through col. 43, l. 25 & Fig. 9. Claim 2 41 of the ’634 patent is representative and recites:

241. A method for controlling a hybrid vehicle, comprising: determining instantaneous road load (RL) required to propel the hybrid vehicle r esponsive to an operator command;
operating at least one elect ric motor to propel the hybrid vehicle when the RL r equired to do so is less than a setpoint (SP);
operating an internal combustion engine of the hybrid vehicle to propel the hybrid vehicle when the RL required to do so is between the SP and a maximum torq ue 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
operating both the at least one electric motor and the engine to propel the hybrid vehicle when the torque RL required to do so is more than the MTO;
controlling said engine such that combu stion of fuel within the engine occurs su bstantially at a stoichiometric ratio, wherein said controlling the engine co mprises limiting a rate of change of tor que output of the engine; andPAICE LLC v. FORD MOTOR COMPANY 5

if the engine is incapable of supplying i nstantaneous torque required to propel the hybrid vehicle, supplying additional torque from the at least one electric motor.

Id. col. 81, ll. 33

– 58

. Also at issue are claims that recit e limitations relat ed to the voltage and current output of the electric motor’s battery. Claim 245, for example

, recites a voltage output requirement of “at least approximately 500 volts” :

245. The method of claim 241,
wherein said operating the at least one electric motor comprises supplying energy from a battery; wherein a maximum DC voltage supplied from said battery is at least approximately 500 volts

. Id. col. 82, ll. 1–5 (emphasis added). These “electrical” claims first appeared in a continuation

- in

- part application filed on April 2, 2001. The ’634 patent is a divisional of a divisional of that application. Finally, several claims of the ’634 patent require operating the engine at torque output levels less than the setpoint “under ab normal and transient conditions .” Claim 265, for example, recites :
265. The method of claim 241, further compri sing:
operating the engine at torque output le vels less than the SP under abnormal and transient conditions to satisfy drivability and/or safet y considerations.

Id. col. 83, ll. 51

– 54 (emphasis added). Claims 7, 17, 27, and 37 of the ’097 patent also recite this “abnormal and transient conditions” limitation.PAICE LLC v. FORD MOTOR COMPANY 6

B. Overview of the Prior Art The Board’s unpatentability determinations are based
on t wo primary references: (1) U.S. Patent No. 5,343,9 70 to Severinsky (“Severinsky”) , and (2) PCT Application Publication WO 00/15455 (“’455 PCT publication”). We briefly describe these references below. 1. Severinsky Severinsky, which issued to a co

- inventor of the ’634 and ’097 patents, describes a control strategy for selecting operation modes in a hybrid vehicle. Severinsky teaches that its vehicle’s internal combustion engine is used only near “its most efficient operational point,” which Se veri nsky defines as when the engine “produces 60

– 90% of its maximum torque.” Severinsky, col. 20 , ll. 63

– 67

. Seve rinsky also describes circumstances in which it is efficient to use the engine (such as “in highway cruising”), other circumstances in which it is more efficient to use an electric motor (such as “in traffic”), and still other circu mstances in which torque is supplied by both the electric motor and the engine (such as in “acceleration/hill clim bing mode”). Id. col. 6, l. 63 through col. 7, l. 16; see also id. col. 14 , ll. 15

– 18; id. col. 22 , ll. 48– 51.

We previously considered Severinsky in two appeals from IPR proceedings involving Paice’s hybrid vehicle patents. See Paice II , 681 F. App’x 904; Paice III , 685 F. App’x 940

. In those cases, we affirmed the Board’s d eterminations that Severinsky , in combination with other references, renders obvious various claims of Paice’s patents.

2. ’455 PCT Publication
The ’455 PCT publication names the same inventors

as the ’634 and ’097 patents and claims priority to appl ication s that appear in both patents ’ chain of priority

. The publication is directed to similar hybrid vehicle technol ogy.PAICE LLC v. FORD MOTOR COMPANY 7

The ’455 PCT publication was published more than one year before the April 2001 con tinuation

- in

- part appl ication in which the electrical claims first appeared and therefore nominally qualifies as prior art to those claims under 35 U.S.C. § 102(b) (2006)

. II. P ROCEDURAL B ACKGROUND In response to a patent infringement suit

, Appellee Ford Motor Company (“Ford”) filed twenty

- five IPR pet itions against Paice’s patents, including those that led to the six proceedings at issue here. The Board held most claims challenged in these proceedings unpatentable as obvious over various combinations of prior art references involving Severinsky and the ’455 PCT publication.
Relevant to this appeal, the Board determined that Severinsky discloses a torque

- based algorithm for determining which operating mode to select in a hybrid vehicle. 758 IPR , slip op. at 14

– 28; 785 IPR , slip op. at 20

– 25; 801 IPR , slip op. at 19

– 25. The Board also interpreted the term “abnormal and transient conditions” recited in the claims of the ’634 and ’097 patents as including star ting and stopping the engine. The Boa rd agreed with Ford that Severinsky discloses the limitation as construed by the Board. 785 IPR , slip op. at 14

– 16, 37, 39, 53

– 54; 792 IPR , slip op. at 13

– 15 , 29 –32 ; 801 IPR , slip op. at 15

– 16, 28

– 29, 55

– 56. Based in part on these findings , the Board held claims 91

– 92, 112, 125

– 26, 145, 252

– 53, 265

– 66, 278

– 79, 282, and 290

– 91 of the ’634 patent and claims 7, 17, 27, and 37

– 38 of the ’097 patent unpatentable as obvious over Severinsky in view of other prior art of record. 3

3 We address here only those claims that Paice identifies as remaining in disp ute

. See No. 17

- 1387, Reply Br. 7; No. 17

- 1406, Reply Br. 1 , 2 n.2 ; see also Ltr. f rom Appellants, Paice LLC v. Ford Motor Co. , No. 17

- 1387,PAICE LLC v. FORD MOTOR COMPANY 8

Finally, the Board determined that the ’455 PCT pu blication discloses the torque

- based control strategy recited in the electrical claims of the ’634 patent, and that Seve rinsky discloses the electrical limitations themselves. 606 IPR , slip op. at 7

– 20; 79 9 IPR , slip op. at 7–18. Based

on these findings, the Board held claims 56

– 65, 68

– 77, 242

– 51, 26 8– 77, 292

– 93, and 298 of the ’634 patent u npatentable as obvious over the ’455 PCT publication in view of Severinsky

. Paice appealed to this court. We have j urisdiction under 28 U.S.C. § 1295(a)(4)(A)

. III. D ISCUSSION
Paice raises two principal arguments

, and a bevy of subsidiary arguments

, on appeal. First, Paice argues that the Board’s Severinsky

- based findings are unsupported by substantial evidence. In particular, Paice asserts that Severinsky discloses a speed- based algorithm, not a torque

- based one as required by the patent claims , and that the Board erred in its construction of “abnormal and transient conditions

. ” Second, Paice argues that the Board erred in finding that the ’455 PCT publication qualifies as prior art to the ’634 patent’s electrical claims. We address each argument in turn. A. The Board’s Severinsky

- Based Obviousness Determinations

T he Board determined that Severinsky renders obv ious various claims of the ’634 and ’097 patents

. Obviou sness is a question of law based on underlying factual findings relating to “the scope and content of the prior art, differences between the prior art and the claims at issue,

Dkt. 51 (Fed. Cir. June 29, 2017) ; Ltr. from Appellants, No. 17

- 1406, Paice LLC v. Ford Motor Co. , Dkt. 46 (Fed. Cir. June 19, 2017)

.PAICE LLC v. FORD MOTOR COMPANY 9

the level of ordinary skill in the pertinent art, and any objective indicia of non -obviousness .” Randall Mfg. v. Rea , 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR Int’l Co. v. Teleflex Inc. , 550 U.S. 398, 406 (2007))

. We review the Board’s ultimate legal determination of obviousness de novo and its underlying factual findings for substantial evidence. PPC Broadband, Inc. v. Corning Optical Commc’ ns RF, LLC , 815 F.3d 747, 751 (Fed. Cir. 2016). Substantial evidence is “such relevant evidence as a reasonable mind might acce pt as adequate to support a conclusion.” In re Gartside , 203 F.3d 1305, 1312 (Fed. Cir. 2000) (quoting Consol. Edison Co. of N.Y. v. N.L.R.B.

, 3 05 U.S. 197, 2 29 (1938))

. 1. The Board’s Finding T hat Severinsky Discloses a Torque

- Based Control Algorithm

P aice argues that the Board erred in finding that Se verinsky discloses a torque

- based system for selecting operating modes . According to Paice, Severinsky teaches a speed

- based system, and , to the extent Severinsky mentions torque at all, it refers only to the engine’s ou tput torque, which is different from the claimed road load torque. We disagree. As the Board found, Severinsky discloses that a microprocessor may determine “the load (if any) to be provided to the engine by the motor, respo nsive to the load imposed by the vehicle’s propulsion r equirements

, so that the engine can be operated in its most fuel efficient operating range.” 758 IPR , slip op. at 18 (emphasis altered) (quoting Severinsky , col. 1 7 , ll. 11

– 15 ). T he Board found that “t he load imp osed by the vehicle’s propulsion requirements” is the road load. Id. at 18

– 19. Thus, the Board reasonably concluded that Severinsky ’s

e lectric motor can be triggered in response to the vehicle’s road load.
As the Board also found, Severinsky elsewhere st ates that the microprocessor “determines whether the internal combustion engine or the electric motor or both shouldPAICE LLC v. FORD MOTOR COMPANY 10

provide torque to the wheels under various monitored operating conditions

. ” Id. at 15 (emphasis altered) (quo ting Severinsky, col. 6, ll. 19

– 23 ). This passage suggests that “torque to the wheels”

— i.e., road load

— is a criterion for determining which mode of operation to select. Fina lly, Severinsky states that the combustion engine is used “only in the near vicinity of its most efficient ope rational point,” which is when the engine “produces 60

– 90% of its maximum torque.” Id. at 16 (quoting Severinsky col. 20
, ll. 63

– 67 ). Ford’s expert testified that “a skilled artisan would have understood that Severinsky’s lower limit of 60% of MTO is a ‘ setpoint.’” Id. at 17

. Based on that testimony, the Board concluded that Severinsky teaches that its engine operates when the road load reaches a setpoint. The Board’s finding that Severinsky uses road load torque, rather than engine output torque, is reason able and supported by substantial evidence.

T he Board’s findings are also consistent with the ’634 patent’s own description of Severinsky. The ’634 patent states that “an important aspect of the invention of” Severinsky is that, “[w]hen the vehicle operating cond itions require torque of [a certain] magnitude, the engine is used to propel the vehicle,” but “when less torque is r equired, an electric motor powered by electrical energy stored in a substantial batt ery bank drives the vehicle.” 785 IPR

, slip op. at 57 (quoting ’634 patent, col. 25 , ll. 11

– 24) (emphases added)

. As the Board concluded, t his and other statement s indicate that road load is used to select operating modes and are “probative on how one with ordinary skill in the art at the time of filing of the i nvolved patent would have read and understood the discl osure of the prior art.” Id. at 54

– 55 , 57 ; see also PharmaStem Therapeutics, Inc. v. Via C ell, Inc. , 491 F.3d 1342, 1362 (Fed. Cir. 2007) (“Admissions in the specific ation regarding the prior art are binding on the patentee for purposes of a later inquiry into obviousness.”).PAICE LLC v. FORD MOTOR COMPANY 11

Paice’s argument that Severinsky discloses a speed

based comparison rather than a torque

- based one is undermined by the passages described above. It is true tha t Severinsky refers to speed when describing certain modes of operation. See, e.g.

, Severinsky, col. 18 , ll. 36– 38 (“The vehicle will operate in a highway mode with the engine running constantly after the vehicle reaches a speed of 30

– 35 mph.”). But, as the Board explained, even if Severinsky describes speed as one factor that can be considered, it describes torque as another factor, as d escribed above. Further, the ’634 patent similarly refers to speed when describing the vehicle’s operating modes,
stat ing that “the traction motor provides torque to propel the vehicle in low

- speed situations.” 758 IPR , slip op. at 20 (quoting ’634 patent, col. 17 , ll. 46

– 47; id. col. 19 , ll. 45

– 46 ). As the Board explained, “Paice cannot hold Severinsky to a different standard than it holds the claimed invention.” Id.

We note also that t he Board’s findings a re consistent with our ruling s in Paice II and Paice III , which involved Severinsky a nd Paice’s related patents. In t hose cases

, we found that substantial evidence supported 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 determin ing when to operate the engine.” Paice II , 681 F. App’x at 915 ; Paice III , 685 F. App’x at 946 (“On this record, the Board had substantial evidence to find that Severinsky discloses comparing the amount of torque required to propel the vehicle to a predet ermined torque value in deciding whether to operate the engine.”). And, while we “disagree[d] with the Board’s reinterpretation of ‘road load’ as including output torque,” we affirmed the Board’s finding that “Severinsky relies on road load to start and o perate the engine and motor.” Paice II , 681 F. App’x at 915

. We also rejected many of the same arg uments that Paice makes on appeal here. See, e.g.

, i d.PAICE LLC v. FORD MOTOR COMPANY 12

(rejecting argument that “Severinsky’s microprocessor uses speed to make such determinations regarding oper ation of the engine”)

. Paice does not persuasively explain why a different result is required on this record.
For these reasons, s ubstantial evidence supports the Board’s finding that Severinsky discloses a torque

- based system for selecting operating modes.

2 . The Board’s Finding T hat Severinsky Satisfies the “abnormal and transient conditions” Claim Limitation

T he Board also found that Severinsky discloses the “abnormal and transient conditions” limitation recited in certain claims of the ’634 and ’097 patent s. T he Board interpreted “abnormal and transient conditions” to ca pture “starting the engine and stopping the engine,” inclu ding in “city traffic and reverse operation.” See 785 IPR

, slip op. at 14

– 16; 792 IPR , slip op. at 13 –15 ; 801 IPR , slip op. at 15

– 16. Paice asserts that the Board’s construction i s t oo broad

. In IPR proceedings, the Board gives claim terms their broadest reasonable interpretation in light of the claim s and specification. See Cuozzo Speed Techs., LLC v. Lee

, 136 S. Ct. 2131, 2142

– 46 (2016). We review the Board’s ultimate claim constructions de novo and its underlying factual determinations involving extrinsic evidence for substantial evidence. See Teva Pharm. USA, Inc. v. Sandoz, Inc. , 135 S. Ct. 831, 841

– 42 (2015) ; PPC Broa dband , 815 F.3d at 751

. We agree with the Board’s construction of “abnormal and transient conditions.” The ’634 patent claims do not specify what “ abnormal ” or “ transient ” conditions are, stating only that the engine must operate at torque output levels less than the setpoint when such conditions exist in order “to satisfy drivability and/or safety consi derations.” ’634 patent, col. 83, ll. 51

– 54 (claim 265)

. Further, neither “abnormal” nor “transient” is used in thePAICE LLC v. FORD MOTOR COMPANY 13

patent specification s. W ith no intrinsic evidence to shed light on the claim term’s meaning, the Board turned to the ’634 patent’s parent patent, U.S. Patent No. 7,104,347 (“’347 patent”) , which is at issue in the companion a ppeal s

. See Paice LLC v. Ford Motor Co. , Nos. 17

- 1263, 17

- 1264, 17

- 1308, 17

- 1309, 17

- 1310, 17

- 1311, 17

- 1442, 17

- 1443 (Fed. Cir.). Claim 22 of the ’347 patent recites “abnormal and transient conditions” comprising “starting and stopping of the engine and provision of torque to satisfy drivabili ty or safety considerations.” ’347 patent, col. 60 , ll. 17

– 21

. As the Board correctly found, claim 22 of the ’347 p atent does not present a definition, but instead identifies

non

- limiting examples of abnormal and transient cond itions

— i.e., (1) starting and stopping of the engine, and (2) provision of torque to satisfy drivability or safety considerations. T he Board appropriately concluded that “abnormal and transient conditions” include starting and stopping the engine. This conclusion is reasonable ; star ting and stopping the engine is a “transie nt” condition insofar as it is temporary. O nce the engine i s on, the condition has ceased.
This conclusion, moreover, is consistent with the prosecution history of the ’09 7 patent. Paice emphasized during prosecution that the “abnormal and transient conditions” recited in the claims “are such conditions as starti ng the engine , during which operation it must nece ssarily be operated at le ss than SP for a short time.” J.A. 12,489 (emphasis added)

. 4 This statement clearly indicates that “abnormal and transient conditions” e ncompass at least starting the engine. See Ventana Med. Sys., Inc. v. Biogenex Labs., Inc. , 473 F.3d 1173, 1184 (Fed. Cir. 2006) (“ As with statements made by the inve n-

4 Appendix citations are to the joint appendix in appeal No. 17

- 1387 unless otherwise indicated.PAICE LLC v. FORD MOTOR COMPANY 14

tor during the prosecution of an ancestor application, statements made during the continued prosecutio n of a sibling application may inform the meaning of the claim language by demonstrating how the inventor understood the invention. ” (internal quotation marks omitted) ).
Paice makes two arguments as to why the Board ne vertheless erred. First, Paice argues that, even if claim 22 of the ’347 patent recites two examples of abnormal and transient conditions, the ’634 patent claims cover only the latter example

— i.e., “provision of torque to satisfy driv ability or safety considerations

. ” It is true that the ’63 4 patent claims require that the engine operate at torque levels less than the setpoint under abnormal and trans ient conditions “to satisfy drivability and/or safety consi derations.” ’634 patent, col. 83, ll. 51

– 54. But operating the engine at output levels less than the setpoint when starting and stopping the engine appears to satisfy those conditions . Indeed, it is reasonable to conclude that operating the engine at low torque as the engine turns on does in fact promote drivability and/or safety consid er ations because it allows the engine to slowly ramp up to a suitably high rpm. Second, Paice argues that the Board erred by failing to exclude from its construction starting and stopping the engine during city traffic and reverse operation of the vehicle

. According to Paice, it specifically disclaimed such claim scope during prosecution of the ’097 patent when it stated that “city traffic and reverse operation are normal conditions.” J.A. 12
, 489

. Again, w e disagree. Paice’s statement made during prosec ution implies only that city traffic and reverse oper ation are not

, by themselves, abnormal and transient conditions. The statement does not imply that starting and stopping the engine, which is generally an abnormal and transient condition, is no longer such a condition when performed in city traffic or reverse operation. We therefore find that the Board’sPAICE LLC v. FORD MOTOR COMPANY 15

construction of “ab normal and transient conditions ” is the broadest reasonable construction of that term.
With respect to the ’097 patent, Paice addit ionally a rgues that the Board erred in determining that Severinsky discloses the “abnormal and transient conditions” limit ation. According to Paice, the Board found that Severinsky discloses operating the engine below the setpoint to preserve the battery’ s life, which the Board found satisfies “drivability and safety considerations.” But, Paice a sserts, the Board never made a finding that Severinsky discloses operating the engine below the setpoint during “abnormal and transient conditions,” as required b y the claims.

We find Paice’s argument unpersuasive . Paice does
not contest the Board’s finding that “abnormal and tra nsient conditions” should have the same meaning across the patents

. See Omega Eng’g, Inc. v. Raytek Corp. , 334 F.3d 1314, 1334 (Fed. Cir . 2003) (“[W] e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meanin g.”). And, as the Board explained, Severinsky describes instances

— e.g., “low

- speed vehicle operation in
tra ffic”

— when it might be “preferable to use the engine somewhat inefficiently rather than to discharge the batteries excessively, which would substantially reduce the battery lifetime.” 792 IPR , slip op. at 31

– 32 ( quoting Severinsky, col. 18, ll. 23

– 33 (int ernal quotation marks omitted) ). The Board determined that “ Severinsky r ationalizes its decision to operate the engine outside its most fuel efficient range”

— i.e., below the setpoint

— “as a tradeoff between engine efficiency and vehicle drivability and safety considerations. ” Id. at 31. In other words, Severinsky teaches operating the engine below the se tpoint in order to provide torque to satisfy safety and drivability considerations, which is covered by the Board’s construction of “abnormal and trans ient conditions.” 785 IPR , slip op. at 15; 792 IPR , slip op. at 14

– 15 & n.10.PAICE LLC v. FORD MOTOR COMPANY 16

And, as Ford’s expert explained

, Severinsky discloses operating the engine below the setpoint when starting the engine , which

, as described above, is a transient cond ition

. No. 17

- 1406
, J.A. 20

, 284

– 85. In particular, Severi nsky discloses that, durin g low

- speed operation

, t here are instances in which the “motor will start the engine while driving the vehicle” when the battery is discharged by 10

– 20%. Severinsky, col. 17 , ll. 56

– 64

. In other words, Severinsky teaches operating the engine below the se tpoint while starting the engine, which is also covered by the Board’s construction.
For these reasons, substantial evidence supports the Board’s findings that Severinsky discloses the “abnormal and transient conditions” limitation recited in the ’634 and ’097 patent claims

. 3

. Paice’s Additional Contentions

Paice next argues that the Board failed to adequately explain its rationale for finding claims 91

– 92, 112, 125

– 26, 145, 252

– 53 , 265, 278

– 79, 282, and 290 of the ’634 patent unpatentable, and instead improperly adopted Ford’s arguments without explanation. Paice asserts that , in so doing, the Board failed to create an adequate record under Securities & Exchange Commission v. Chenery Corp. , 318 U.S. 80 (1943), a s to these claims. Chenery requires that a dministrative agencies provide a reasoned basis for their decisions. See i d. at 94 (“[T]he orderly functioning of the process of review requires that the grounds upon which the admi nistrative agency acted b[e] clearly disclosed and adequately sustained. ”)

. In the IPR context, we have interpreted Chenery ’s mandate as requiring the Board’s explanation to “be capable of being reasonably

. . . disc erned from a relatively concise

. . . discussion.” In re Nu V asive, Inc. , 842 F.3d 1376, 1383 (Fed. Cir. 2016) (internal quotation marks omitted)

. A s we have explained, “it is not adequate to summarize and reject arguments without explaining why the [Board]PAICE LLC v. FORD MOTOR COMPANY 17

accepts the prevailing argument.” Id. ; Cutsforth, Inc. v. MotivePower, Inc. , 636 F. App’x 575, 578 (Fed. Cir. 2016) (holding that the Board failed to provide an adequate record where the “majority of [its] Final Written Decision i s spent summarizing the parties’ arguments and offers only conclusory analysis of its own ”).

In Nu V asive , we vacated the Board’s obviousness d eterminations where the Board neither expressly adopted the petitioner’s arguments regarding motivation to co mbine nor provided reasoned explanations for crediting the
argum ents. 842 F.3d at 1384. Similarly, in Personal Web Technologies, LLC v. Apple, Inc. , 848 F.3d 987 (Fed. Cir. 2017), we vacated the Board’s obviousness determination where the Board did “not cite, let alone explain or analyze or adopt, an earlier portion of [the] petition that refers to” the relevant passages of the prior art, and essentially found “that a skilled artisan, once presented with the two references, would have understood that they could be combined.” Id. at 993

. We recognized, however, that “[t]he amount of explanation needed to meet the gover ning legal standards

— to enable judicial review and to avoid judicial displacement of agency authority

— necessarily depends on context.” Id. at 994. Indeed, “[a] brief explanation may do all that is needed if, for example, the technology is simple and familiar and the prior art is clear in its language and easily understood.” Id.

A lthough the technology at issue here is arguably not “simple,” it is familiar based in part on Paice’s repeated arguments in related proceedings and the Board’s hu ndreds of pages of analysis in these six proceedings

. It is clear from the Board’s analysis that it rejected Paice’s primary argument s that (1) Severinsky does not disclose a torque

- based system

, and (2) “abnormal and transient conditions” excludes starting and stopping the engine in city traffic and reverse operation

. The Board’s obviou sness determinations flow directly from its rejection of these argument s , and t he Board’s analysis is commens u-PAICE LLC v. FORD MOTOR COMPANY 18

rate with Paice’s argum ents

. See Novartis AG v. Torren t Pharm. Ltd. , 853 F.3d 1316, 1327

– 28 (Fed. Cir. 2017) (finding that it would be inappropriate “ to find fault in the Board’s arguably limited treatment of [certain] arg uments” where the Board’s treatment “was at least co mmen surate with” the patent owner’s presentation of those arguments ).
And, unlike the Board’s decisions in Nu V asive and Personal Web Technologies , the Board’s decision s here cite to the relevant portions of Ford’s briefing that explain how the prior art disclo ses the relevant claim limitations. 785 IPR , slip op. at 28

– 29, 36

– 39; 801 IPR , slip op. at 28

– 29. In this context, the Board’s analysis is readily di scernible and sufficient under Chenery

. See Ignite USA, LLC v. CamelBak Prods., LLC

, No. 2016

- 2747, 2017 WL 4548459, at *5 (Fed. Cir. Oct. 12, 2017) (noting that, although it is usually insufficient for the Board to merely reject one side’s arguments, it is sufficient for the Board to explain that it finds the other side’s arguments and supporting evide nce more persuasive). Finally, Paice argues that the Board erred in finding that Severinsky, in combination with the secondary references of record, renders dependent claims 252

– 53, 265

– 66, and 291 of the ’634 patent obvious. The Board’s determinations, however, are consistent with our decision in the companion case, see Paice LLC v. Ford Motor Co.

, Nos. 17

- 1263, 17

- 1264, 17

- 1308, 17

- 1309, 17

- 1310, 17

- 1311, 17

- 1442, 17

- 1443 (Fed. Cir.), as well as our dec ision s in Paice I and Paice III , in which we rejected many of these same arguments, see Paice I , 681 F. App’x at 890

– 91; Paice III

, 685 F. App’x at 946. We see no reason to depart from our conclusions in those cases. We have considered Paice’s remaining arguments as to the Board’s Severinsky

- based obviousness determin ations and find them unpersuasive. In sum, substantial evidence supports the Board’s findings as to claims 91

– 92,PAICE LLC v. FORD MOTOR COMPANY 19

112, 125

– 26, 145, 252

– 53, 265

– 66, 278

– 79, 282, and 290

– 91 of the ’634 patent and claims 7, 17, 27, and 37

– 38 of the ’097 patent

. We therefore affirm the Board’s obviou sness determinations as to those claims.

B . The Board’s ’455 PCT Publication

- Based Findings

T he Board also found that t he ’455 PCT publication

, in view of Severinsky, renders obvious the electrical claims of the ’634 patent. Paice does not challenge the Board’s finding that the references disclose every limit ation recited in those claims or that a skilled artisan would have been motivated to combine the references . Instead, Paice argues only that the ’455 PC T publication is not prior art to the electrical claims because the y claim prior ity to an application, U.S. Patent Application No. 09/264,817 (“’817 application”) , that predates the ’455 PCT publication

. The priority date for later- added patent claims d epends on when the claimed subject matter first appeared in the chain of patent applications from which the claims

arose. Augustine Med., Inc. v. Gaymar Indus., Inc. , 181 F.3d 1291, 1302 (Fed. Cir. 1999 )

. For claims to be entitled to a priority date of an earlier- filed application, the appl ication must provide adequate written description support for the later

- claimed limitations. Id. ; see also Progressive Cas. Ins. Co. v. Liberty Mut. Ins. Co. , 625 F. App’x 552, 558 (Fed. Cir. 2015). Here, Paice asserts that the ’817 application incorporates by reference Severinsky , which itself provides the requisite written description support. 5 The Board rejected that argument, concluding that the ’817 a pplication does not incorporate Severinsky , and that

5 Paice makes similar arguments with respect to other priority application s , but , because we agree with Paice’s arguments as to the ’817 application, we find it unnecessary to consider any of th ose other applications.PAICE LLC v. FORD MOTOR COMPANY 20

the electrical claim limitations lack written description support in the ’817 application standing alone

. The threshold question on appeal, therefore, is whether the Board ’s incorporation ruling is in error. We conclude that it is.

I ncorporation by reference provides “ a method for i ntegrating material from various d ocuments into a host document[]

. . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicit ly contained therein.” Advanced Display Sys., Inc. v. Kent State Univ. , 212 F.3d 1272, 1282 (Fed. Cir. 2000). “ To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and cl early indicate where that material is found in the var ious documents.” Id. Whether and to what extent mater ial has been incorporated by reference is a question of law that we review de novo

. Harari v. Lee , 656 F.3d 1331, 1334 (Fed. Cir. 2011). “ [T] he standard of one reasonably skilled in the art should be used to determine whether the host document describes the material to be incorporated by reference with sufficient particularity.” Advanced Display , 212 F.3d at 1283

. The ’817 application expressly i ncorporates Severi nsky in the following passage: This application discloses a number of i mprovements over and enhancements to the hybrid vehicles disclosed in the inventor’s U.S. Pat. No. 5,343,970 (the “’970 patent”) [Severinsky] , which is incorporated herein by this reference . Where di fferences are not mentioned, it is to be understood that the specifics of the vehicle design shown in the ’970 patent are applicable to the vehicles shown herein as well.

J.A

. 11
, 174 (emphasis added) (also appearing in the issued ’634 patent at col. 10, ll. 40

– 47)

. The first sentencePAICE LLC v. FORD MOTOR COMPANY 21

of this passage is broad and unambiguous . It states that Severinsky “ is ,” without qualification, incorporated into the ’817 application “by this reference”— i.e., the reference contained in the sentence. The sentence identifies with detailed particularity the specific material subject to incorporation (Severinsky, and not just particular po rtions thereof ) and where that material can be found (U.S. Patent No. 5,3 43,970)

. Such language is plainl y sufficient to incorporate Severinsky in its entirety

. See Harari , 656 F.3d at 1335

– 36 (finding that prior art applications were incorporated in their entirety based on the following “broad and unequivocal language ” : ‘The disclosures of the two applicat ions are hereby incorporate[d] by reference’”) ; Advanced Display , 212 F.3d at 1282

. The Boar d reached a contrary conclusion , however, by relying on the subsequent sentence in the passage , which states: “Where differences are not mentioned, it is to be und erstood that the specifics of the vehicle design shown in the ’970 patent are applicable to the vehicles shown herein as well.” According to the Board, this sentence limits incorporation to only those disclosures in Severi nsky that are not different from disclosures in the ’817 application. B ecause the Board found differences between Severinsky’s disclosures related to the electrical limit ations and the ’817 application’s corresponding disclosures, the Board determined that Severinsky’s disclosures are

no t incorporated into the ’817 application. Th e Board’s conclusion is incorrect

. T he second sentence merely states that Severinsky’s features are understood to also apply to the vehicles described as the present invention in the ’817 application

, except where the ’817 application ’s specification “me ntion[s]” otherwise

. In other words, t he ’817 application refers to differences from Severinsky only to the extent necessary to describe differences between the inventions of Severinsky and the ’817 applicatio n

. See, e.g. , J.A. 11,179 (“According to the present invention, the controll a-PAICE LLC v. FORD MOTOR COMPANY 22

ble torque

- transfer unit shown in the ’970 patent [Seve rinsky] is eliminated by replacing the single electric motor shown therein by two separate motors [.] ”); J.A. 11,190 ( simila r ). This statement provides a n expedient way for the applicant to describe the invention vis -à- vis Severi nsky without describing every feature of Severinsky that is subsum ed within the invention

. The sentence has no bearing , however, on the extent of inco rporation. It refers only to the applicability of certain features of Severinsky’s invention to the ’817 application’s purportedly new and improved hybrid veh icle, rather than to which textual portions of the Severi nsky document are incorporated in the ’817 application

. The applicability of a document’s disclosed features and the incorporation of the document itself are distinct concepts , a nd one does not imply the other

. See Modine Mfg. Co. v. U.S. Int’l Trade Comm’n , 75 F.3d 1545, 1553 (Fed. Cir. 199 6) (“[I]ncorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent.”); see also Fifth Generation Comput. Corp. v. Int’l Bus. Machs. Corp. , 416 F. App’x 74, 80 (Fed. Cir. 2011) ( agreeing that ce rtain prior art refe rences were incorporated into the host patent but disagre eing “ that every concept of the prior inventions is necessarily imported into every claim of the later patent ”); S. Clay Prods., Inc. v. United Catalysts, Inc. , 43 F. App’x 379, 3 83

– 84 (Fed. Cir. 2002) (finding incorporation no twithstanding the host patent’s criticism of the incorp orated patent ’s invention ). W hen read in context, the passage makes clear that it incorporates the entire Seve rinsky document into the ’817 application, but applies only some of the specific features of Severinsky’s invention disclosed in that document to the ’817 application’s inve ntion.
In reaching its contrary conclusion, the Board emph asized the differences between the inventions of the ’817 applicati on and Severinsky. But such differences arePAICE LLC v. FORD MOTOR COMPANY 23

present in every case in which one patent purports to incorporate another, because

, in every case, the host patent purports to improve upon that which it incorp orat es

. See In re Schoenwald , 964 F.2d 1122, 1123 (Fed. Cir. 1992) (“ Paramount among the patentability requir ements is that that which is sought to be patented must be

new. ”); see also ContentGuard Holdings, Inc. v. Apple Inc.

, 701 F. App’x 957, 958 n.1 (Fed. Cir. 2017) (“The ’053 patent incorporates by reference the Stefik patents and purports to improve upon the inventions disclosed ther ein.”). This case is no different. In fact, the first sentence in the incorporation passage quote d above clearly acknowledges such differences in the form of “ improv em ents” and “enhancements” over Severinsky. See J.A. 11
, 174 (“T his application discloses a number of improv ements over and enhancements to the hybrid vehicles disclosed in [Severinsky

. ]”) ; see also J.A. 11,176 (“[I]t is desired to . . . provid[e] a substant ially simplified parallel hybrid system as compared to those shown in the prior art, again as including the ’970 [Severinsky] patent.”)

. Yet , the function of th at sentence is to incorporate Seve rinsky despite such differences.

Even if the second sentence in the ’817 application’s incorporation clause could be read as a narrow incorpor ation, our holding in Harari v. Lee would foreclose the Board’s conclusion. The patent application at issue in Harari contained two incorporation clauses. In the first clause, the application stated that “[t]he disclosures” of two prior art applications “are hereby incorporate[d] by reference.” Harari , 656 F.3d at 1335. In the second clause, the application stated that only the “[r]elevant portions” of the disclosures are incorporated. Id. We held that the “broad and unequivocal language ” of the first clause “incorporates the entire disclosure s of the two applications,” and that the second clause’s narrower language d id not diminish the scope of incorporation. Id. at 1335

– 36. Similarly , here, the first sentence in thePAICE LLC v. FORD MOTOR COMPANY 24

passage quoted above incorporates the entire disclosure of Severinsky, and the second sentence

— even if relevant to incorporation —d oes not negate or oth erwise limit the broad incorporation effectuated by the first sentence as the Board found and as Ford urges

. At oral argument before this court

, Ford sought to di stinguish Harari on grounds that, in that case

, there were two incorporation clauses separated by several par agraphs of text, in contrast to this case, where the two sentences in dispute appear in a single incorporation clause. Oral Arg. at 26:45

– 27:12, Paice LLC v. Ford Motor Co. (No. 2017

- 1387), http://oralarguments.cafc. uscourts.gov/default.aspx ?fl=2017

- 1387.mp3

. According to Ford, the “juxtaposition of the two sentences back

- to

back” in the ’817 application would inform a skilled art isan that differences are not incorporated therein

. Id. at 27:53

– 28:20. Ford’s purported distincti on of Harari on the basis that the incorporation clauses at issue were separated by
text is not persuasive

. We said nothing in Harari about the proximity of the incorporation clauses, predicating our holding instead on the “broad and unequivocal language ” of the first incorporation clause , and notwithstanding that the incorporation “occurred during a discussion of ” particular teachings

. And , while we agree with Ford that Harari commands that incorporation clauses be read in context, we disagree that the sentences at issue here limit the scope of incorporation when so read. The ’817 applic ation’s incorporation passage provides no nexus between the “differences” referenced in the second sentence and the incorporation referenced in the first sentence, in

con trast to cases in which we have found incorporation to be limited

. See, e.g.

, Zenon Envtl., Inc. v. U.S. Filter Corp. , 506 F.3d 1370, 1379 (Fed. Cir. 2007) (finding that the language “ [f] urther details relating to the construction and deployment of a most preferred skein are found in [ prior art patents ], the relevant disclosures of each ofPAICE LLC v. FORD MOTOR COMPANY 25

which are included by reference ” “expressly limit [ed] the incorporation to only relevant disclosures of the patents, indicating that the disclosures are not being incorp orated in their entirety”) ; Cook Biotech Inc. v. Acell, Inc. , 460 F.3d 1365, 1375

– 76 (Fed. Cir. 2006) (finding incorporation of only particular teachings from a prior art patent where the host document’s incorporation clause stated that “the procedure for preparing intestinal submucosa” detailed in the prior art patent was “expressly incorporated herein by reference”)

. T here is no reasonable basis to conclude that the ’817 application’s second sentence limits the incorp oration set forth in the first senten ce.
Ford also asserted for the first time at oral argument that our decision s in Callaway Golf Co. v. Acushnet Co.

, 576 F.3d 1331 (Fed. Cir. 2009), and Husky Injection Molding Systems Ltd. v . Athena Automation Ltd. , 838 F.3d 12 36 (Fed. Cir. 2016) , support the Board’s ruling

. But, i n both cases, we found that the incorporation clau ses at issue did in fact incorporate the relevant passages of the prior art into the host documents. And, in any event, those cases are inapposite.

In Callaway Golf , the incorporation clause stated that “[r]eference is made to [ the prior art patent] which d escribes a number of foamable compositions of a character which may be employed for one or both layers 14 and 16 for the golf ball of this invention.” 576 F.3d at 134 5
, 1346

– 47 (emphasis omitted) . We found that this passage adequately “identifie[d] with specificity both what mat erial is being incorporated by reference (foamable polyme ric compositions suitable for golf ball cover layers) and where it may be found ( the [prior art] patent).” Id. at 1346. The passage at issue here is far more explicit

, and

, as described above, makes clear that Severinsky is inco rporated in its entirety , unlike the much more limited and ambiguous clause at issue in Callaway Golf

.PAICE LLC v. FORD MOTOR COMPANY 26

In H usky Injection

, as in Harari

, there were two i ncorporation clauses at issue. The first clause stated that “[t]he tie

- bar nuts can be secured

. . . by an y appropriate mechanism, such as the pineapple and toothed

- ring mechanism described in [the prior art p atent],” while the second clause stated that “[a]ll cross

- referenced patents and application[s] referred to in this specification are hereby incorporated by reference.” 838 F.3d at 1248 (emphasis added)

. As in Callaway Golf , we held that the clauses inco rporate d relevant passages of the p rior art because they “identifie [d] with sufficient particularity what” they incorporate from the prior art

— i.e., toothed locking mechanisms. Id. at 1248. We therefore held that the two clauses “work in concert to incorporate at least some portions of” the prior art patent. Id. at 1249. But, because we held that the relevant passages from the prior art were incorporated, we found it unnecessary to dete rmine w hether the second, broader clause incorporated the prior art patent in its entirety. Id. (“ It is therefore of no consequence whether G laesener’ s broader statement in fact incorporates the rest of Choi, i.e. , in its entirety .”). Here, by contrast, we find that the first sentence in the ’817 application’s incorporation passage incorporates Severinsky in its entirety, and Husky Injection is ther efore inapposite

. To the extent Ford cites Callaway Golf and Husky Injection for the proposition that incorporation language must be read in context and holistically , we agree. And, as described above, when so read , the incorporation clause at issue here incorporates Severinsky in its entirety. We conclude that the Board erred in holding otherwise. 6

6 I n a previous appeal involving the same parties

, we stated in a footnote that Severinsky is incorporated by reference in the related ’347 patent

. See Paice II , 681 F.PAICE LLC v. FORD MOTOR COMPANY 27

That conclusion, however, does not end the inquiry. To prevail on its argument that the ’455 PCT publication is not prior art to the electrical claims, Paice must show that the ’817 application, with Severinsky incorporated therein, provide s sufficient written description support for those claims

. And, although the Board analyzed the ’817 application to determine whether it provides such su pport, the Board did not analyze Severinsky for that pu rpose. The written description inquiry is a highly fact

intensive one that “requires fact findings this court is not permitted to make.” Bilstad v. Wakalopulos , 386 F.3d 1116, 1126 (Fed. Cir. 2004) ; Union Oil Co. of Cal. v . Atl. Richfield Co. , 208 F.3d 989, 1000 (Fed. Cir. 2000) (noting that “written description questions are in tensely factual, and should be dealt with on a case

- by

- case basis, with out the application of wooden rules ”)

. We therefore remand for the Board to determine in the first instance whether the ’817 application, with Severinsky incorporated ther ein, suppl ies the requisite written description support for the ’634 patent’s electrical claims. In other words, the Board must consider Severinsky for that purpose on remand. 7

App’x at 9 14 n.4. The ’347 patent specification contains the same incorporation language at issue here.

7 A lthough the Board found , in the context of its incorporation

- by

- reference analysis, certain “differences” between Severinsky’s electrical disclosure and the ’817 application’s corresponding disclosure , such differences do
not necessarily preclude a finding that Severinsky pr ovides written description support for the electrical limit ation s recited in the ’634 patent claims. See 606 IPR , slip op. at 9 (agreeing with Ford that, for purposes of obviou sness, Severinsky “teaches the specific voltage, current, and ratio values recited by the challenged claims”)

.PAICE LLC v. FORD MOTOR COMPANY 28

Finally, with respect to the electrical claims that r ecite a low electrical current

— i.e., a current below appro ximately 75 amperes or 150 amperes

, s ee, e.g. , ’634 paten t, col. 63, ll. 30

– 31 (claim 58 ); id. , col. 86, l l

. 52

– 54 (claim 293)

— Paice argues that the Board erred in finding that the ’817 application

, standing alone, does not provide adeq uate written description support. We do not address that argument here. If, o n remand, the Board concludes that Severinsky fails to provide the requisite written description support for the low current claims, the Board should reconsider its finding that the ’817 application , on its face, does not provide such support.

IV. C ONCLUSION For the reasons stated above, we affirm the Board’ s obviousness determinations as to claims 91

– 92, 112, 125

– 26, 145, 252

– 53, 265

– 66, 278

– 79, 282, and 290

– 91 of the ’634 patent and claims 7, 17, 27, and 37

– 38 of the ’097 patent

. We vacate, however, the Board’s determination that claims 56

– 65, 68

– 77, 242 –5 1, 268

– 77, 292

– 93, and 298 of the ’634 patent are obvious over the ’455 PCT publication in view of Severinsky

, and remand for pr oceedings consistent with this opinion.

AFFRIMED IN APPEAL NO. 17

- 1406 AFFIRMED IN PART, VACATE D IN PART, AND REMANDED IN APPEAL NO S . 17

- 1387 , 17

- 1388, 17

- 1390, 17

- 1457, AND 17

- 1458

C OSTS

No costs.