United States Court of Appeals 

for the Federal Circuit ______________________ 

PAICE LLC, THE ABELL FOUNDATION, INC.,

Appellants

v.

FORD MOTOR COMPANY,

Appellee

______________________ 

2017-1387, 2017-1388, 2017-1390, 2017-1457, 2017-1458

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. 

IPR2015-00606, IPR2015-00758, IPR2015-00785, 

IPR2015-00799, IPR2015-00801.

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

PAICE LLC, THE ABELL FOUNDATION, INC.,

Appellants

v.

FORD MOTOR COMPANY,

Appellee

______________________ 

2017-1406

______________________ 
2 PAICE LLC v. FORD MOTOR COMPANY

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2015-

00792.

______________________ 

Decided: February 1, 2018

______________________ 

 RUFFIN B. CORDELL, Fish & Richardson, PC, Washington, DC, argued for appellants. Also represented by 

TIMOTHY W. RIFFE, BRIAN JAMES LIVEDALEN, DANIEL 

TISHMAN. 

 GABRIEL BELL, Latham & Watkins LLP, Washington, 

DC, argued for appellee. Also represented by MATTHEW J.

MOORE; FRANK A. ANGILERI, SANGEETA G. SHAH, JOHN P.

RONDINI, ANDREW B. TURNER, Brooks Kushman PC, 

Southfield, MI.

______________________ 

Before LOURIE, O’MALLEY, and TARANTO, Circuit Judges.

O’MALLEY, Circuit Judge.

Paice LLC and The Abell Foundation, Inc. (collectively, “Paice”) appeal from final written decisions 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 following 

 

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 determinations 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. FACTUAL BACKGROUND

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 background necessary to resolve the issues on appeal.

Paice’s related ’634 and ’097 patents, both titled “Hybrid 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) (801 IPR).

2 Related 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.
4 PAICE LLC v. FORD MOTOR COMPANY

powered electric motors. The claims at issue generally 

recite methods for comparing the instantaneous torque 

required to propel the vehicle, which the patents refer to 

as “road load” (“RL”), to both a setpoint (“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. 12–29, 44–65; 

id. col. 41, l. 4 through col. 43, l. 25 & Fig. 9. Claim 241 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 responsive to an operator command;

operating at least one electric motor to 

propel the hybrid vehicle when the RL required 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 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

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 combustion of fuel within the engine occurs substantially at a stoichiometric ratio, 

wherein said controlling the engine comprises limiting a rate of change of torque 

output of the engine; and
PAICE LLC v. FORD MOTOR COMPANY 5

if the engine is incapable of supplying instantaneous 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 recite limitations related 

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 abnormal and transient conditions.” 

Claim 265, for example, recites: 

265. The method of claim 241, further comprising:

operating the engine at torque output levels less than the SP under abnormal and 

transient conditions to satisfy drivability 

and/or safety 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.
6 PAICE LLC v. FORD MOTOR COMPANY

B. Overview of the Prior Art

The Board’s unpatentability determinations are based 

on two primary references: (1) U.S. Patent No. 5,343,970 

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 Severinsky defines as when the engine “produces 60–90% of its 

maximum torque.” Severinsky, col. 20, ll. 63–67. Severinsky 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 circumstances in which torque is supplied by both the electric 

motor and the engine (such as in “acceleration/hill climbing 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 determinations 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 applications that appear in both patents’ chain of priority. The

publication is directed to similar hybrid vehicle technology.
PAICE LLC v. FORD MOTOR COMPANY 7

The ’455 PCT publication was published more than 

one year before the April 2001 continuation-in-part application 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. PROCEDURAL BACKGROUND

In response to a patent infringement suit, Appellee 

Ford Motor Company (“Ford”) filed twenty-five IPR petitions 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 starting 

and stopping the engine. The Board 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 dispute. See No. 17-1387, Reply 

Br. 7; No. 17-1406, Reply Br. 1, 2 n.2; see also Ltr. from 

Appellants, Paice LLC v. Ford Motor Co., No. 17-1387, 
8 PAICE LLC v. FORD MOTOR COMPANY

Finally, the Board determined that the ’455 PCT publication discloses the torque-based control strategy recited 

in the electrical claims of the ’634 patent, and that Severinsky discloses the electrical limitations themselves. 

606 IPR, slip op. at 7–20; 799 IPR, slip op. at 7–18. Based 

on these findings, the Board held claims 56–65, 68–77, 

242–51, 268–77, 292–93, and 298 of the ’634 patent unpatentable as obvious over the ’455 PCT publication in 

view of Severinsky. 

Paice appealed to this court. We have jurisdiction 

under 28 U.S.C. § 1295(a)(4)(A). 

III. DISCUSSION

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

 The Board determined that Severinsky renders obvious various claims of the ’634 and ’097 patents. Obviousness 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 accept 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., 

305 U.S. 197, 229 (1938)). 

1. The Board’s Finding That Severinsky 

Discloses a Torque-Based Control Algorithm

Paice argues that the Board erred in finding that Severinsky 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 output 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, responsive to the load imposed by the vehicle’s propulsion requirements, 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. 17, ll. 11–15). 

The Board found that “the load imposed by the vehicle’s 

propulsion requirements” is the road load. Id. at 18–19. 

Thus, the Board reasonably concluded that Severinsky’s

electric motor can be triggered in response to the vehicle’s 

road load.

As the Board also found, Severinsky elsewhere states 

that the microprocessor “determines whether the internal 

combustion engine or the electric motor or both should 
10 PAICE LLC v. FORD MOTOR COMPANY

provide torque to the wheels under various monitored 

operating conditions.” Id. at 15 (emphasis altered) (quoting 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. Finally, Severinsky states that the combustion engine is used 

“only in the near vicinity of its most efficient operational 

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 reasonable and supported by substantial evidence.

The 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 conditions require torque of [a certain] magnitude, the engine is 

used to propel the vehicle,” but “when less torque is required, an electric motor powered by electrical energy 

stored in a substantial battery bank drives the vehicle.” 

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

24) (emphases added). As the Board concluded, this and 

other statements 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 involved patent would have read and understood the disclosure of the prior art.” Id. at 54–55, 57; see also 

PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 

1342, 1362 (Fed. Cir. 2007) (“Admissions in the specification 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 speedbased comparison rather than a torque-based one is 

undermined by the passages described above. It is true 

that 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 described above. Further, the ’634 patent similarly refers to 

speed when describing the vehicle’s operating modes, 

stating 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 the Board’s findings are consistent 

with our rulings in Paice II and Paice III, which involved 

Severinsky and Paice’s related patents. In those 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 determining 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 predetermined 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 operate the engine and motor.” Paice II, 681 F. 

App’x at 915. We also rejected many of the same arguments that Paice makes on appeal here. See, e.g., id. 
12 PAICE LLC v. FORD MOTOR COMPANY

(rejecting argument that “Severinsky’s microprocessor 

uses speed to make such determinations regarding operation of the engine”). Paice does not persuasively explain

why a different result is required on this record.

For these reasons, substantial evidence supports the 

Board’s finding that Severinsky discloses a torque-based 

system for selecting operating modes.

2. The Board’s Finding That Severinsky Satisfies the 

“abnormal and transient conditions” Claim Limitation

The Board also found that Severinsky discloses the 

“abnormal and transient conditions” limitation recited in 

certain claims of the ’634 and ’097 patents. The Board 

interpreted “abnormal and transient conditions” to capture “starting the engine and stopping the engine,” including 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 

is too broad. 

In IPR proceedings, the Board gives claim terms their 

broadest reasonable interpretation in light of the claims 

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 Broadband, 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 considerations.” ’634 patent, col. 83, ll. 51–54 (claim 265). 

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

patent specifications. With 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 appeals. 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 drivability or safety considerations.” ’347 patent, 

col. 60, ll. 17–21. 

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

non-limiting examples of abnormal and transient conditions—i.e., (1) starting and stopping of the engine, and 

(2) provision of torque to satisfy drivability or safety 

considerations. The Board appropriately concluded that 

“abnormal and transient conditions” include starting and 

stopping the engine. This conclusion is reasonable; starting and stopping the engine is a “transient” condition 

insofar as it is temporary. Once the engine is on, the 

condition has ceased.

This conclusion, moreover, is consistent with the 

prosecution history of the ’097 patent. Paice emphasized 

during prosecution that the “abnormal and transient 

conditions” recited in the claims “are such conditions as 

starting the engine, during which operation it must necessarily be operated at less than SP for a short time.” 

J.A. 12,489 (emphasis added).4 This statement clearly 

indicates that “abnormal and transient conditions” encompass 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 inven-

 

4 Appendix citations are to the joint appendix in 

appeal No. 17-1387 unless otherwise indicated.
14 PAICE LLC v. FORD MOTOR COMPANY

tor during the prosecution of an ancestor application, 

statements made during the continued prosecution 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 nevertheless 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 drivability or safety considerations.” It is true that the ’634 

patent claims require that the engine operate at torque 

levels less than the setpoint under abnormal and transient conditions “to satisfy drivability and/or safety considerations.” ’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 considerations 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, we disagree. Paice’s 

statement made during prosecution implies only that city 

traffic and reverse operation 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’s 
PAICE LLC v. FORD MOTOR COMPANY 15

construction of “abnormal and transient conditions” is the 

broadest reasonable construction of that term.

With respect to the ’097 patent, Paice additionally argues that the Board erred in determining that Severinsky 

discloses the “abnormal and transient conditions” limitation. 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 asserts, the Board never made a finding that Severinsky 

discloses operating the engine below the setpoint during 

“abnormal and transient conditions,” as required by the 

claims.

We find Paice’s argument unpersuasive. Paice does 

not contest the Board’s finding that “abnormal and transient 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 

meaning.”). And, as the Board explained, Severinsky 

describes instances—e.g., “low-speed vehicle operation in 

traffic”—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 (internal quotation marks 

omitted)). The Board determined that “Severinsky rationalizes 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 setpoint in order to provide torque to satisfy safety and 

drivability considerations, which is covered by the Board’s 

construction of “abnormal and transient conditions.” 785 

IPR, slip op. at 15; 792 IPR, slip op. at 14–15 & n.10.
16 PAICE LLC v. FORD MOTOR COMPANY

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 condition. No. 17-1406, J.A. 20,284–85. In particular, Severinsky discloses that, during low-speed operation, there 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 setpoint 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), as to these claims.

Chenery requires that administrative agencies provide 

a reasoned basis for their decisions. See id. at 94 (“[T]he 

orderly functioning of the process of review requires that 

the grounds upon which the administrative 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 . . . discerned from a relatively concise . . . 

discussion.” In re NuVasive, Inc., 842 F.3d 1376, 1383 

(Fed. Cir. 2016) (internal quotation marks omitted). As 

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 

is spent summarizing the parties’ arguments and offers 

only conclusory analysis of its own”).

In NuVasive, we vacated the Board’s obviousness determinations where the Board neither expressly adopted 

the petitioner’s arguments regarding motivation to combine nor provided reasoned explanations for crediting the 

arguments. 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 governing 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.

Although 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 hundreds of pages of analysis in these six proceedings. It is 

clear from the Board’s analysis that it rejected Paice’s 

primary arguments 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 obviousness determinations flow directly from its rejection of 

these arguments, and the Board’s analysis is commensu-
18 PAICE LLC v. FORD MOTOR COMPANY

rate with Paice’s arguments. See Novartis AG v. Torrent 

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] arguments” where the Board’s treatment “was at least commensurate with” the patent owner’s presentation of those 

arguments). 

And, unlike the Board’s decisions in NuVasive and 

Personal Web Technologies, the Board’s decisions here cite 

to the relevant portions of Ford’s briefing that explain 

how the prior art discloses 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 discernible 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 evidence 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 decisions 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 determinations 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 obviousness determinations as to those claims.

B. The Board’s ’455 PCT Publication-Based Findings

The Board also found that the ’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 limitation recited in those claims or that a skilled artisan would 

have been motivated to combine the references. Instead, 

Paice argues only that the ’455 PCT publication is not 

prior art to the electrical claims because they claim priority 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 depends 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 application 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 application does not incorporate Severinsky, and that 

 

5 Paice makes similar arguments with respect to 

other priority applications, but, because we agree with 

Paice’s arguments as to the ’817 application, we find it 

unnecessary to consider any of those other applications.
20 PAICE LLC v. FORD MOTOR COMPANY

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.

Incorporation by reference provides “a method for integrating material from various documents 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 explicitly 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 

clearly indicate where that material is found in the various documents.” Id. Whether and to what extent material 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 incorporates Severinsky in the following passage:

This application discloses a number of improvements 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 differences 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 sentence 
PAICE 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 portions thereof) and where that material can be found (U.S. 

Patent No. 5,343,970). Such language is plainly 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 applications are hereby incorporate[d] by reference’”); 

Advanced Display, 212 F.3d at 1282. 

The Board 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 

understood 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 Severinsky that are not different from disclosures in the ’817 

application. Because the Board found differences between 

Severinsky’s disclosures related to the electrical limitations and the ’817 application’s corresponding disclosures, 

the Board determined that Severinsky’s disclosures are 

not incorporated into the ’817 application. The Board’s 

conclusion is incorrect. 

The 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 “mention[s]” otherwise. In other words, the ’817 application 

refers to differences from Severinsky only to the extent 

necessary to describe differences between the inventions 

of Severinsky and the ’817 application. See, e.g., J.A. 

11,179 (“According to the present invention, the controlla-
22 PAICE LLC v. FORD MOTOR COMPANY

ble torque-transfer unit shown in the ’970 patent [Severinsky] is eliminated by replacing the single electric motor 

shown therein by two separate motors[.]”); J.A. 11,190 

(similar). This statement provides an expedient way for 

the applicant to describe the invention vis-à-vis Severinsky without describing every feature of Severinsky that is 

subsumed within the invention. 

The sentence has no bearing, however, on the extent 

of incorporation. It refers only to the applicability of 

certain features of Severinsky’s invention to the ’817 

application’s purportedly new and improved hybrid vehicle, rather than to which textual portions of the Severinsky 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, and 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. 1996) (“[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 certain prior art references were incorporated into the host patent but disagreeing “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, 383–84 (Fed. Cir. 2002) (finding incorporation notwithstanding the host patent’s criticism of the incorporated patent’s invention). When read in context, the 

passage makes clear that it incorporates the entire Severinsky 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 invention.

In reaching its contrary conclusion, the Board emphasized the differences between the inventions of the ’817 

application and Severinsky. But such differences are 
PAICE 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 incorporates. See In re Schoenwald, 964 F.2d 1122, 1123 (Fed. 

Cir. 1992) (“Paramount among the patentability requirements 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 therein.”). This case is no different. In fact, the first sentence 

in the incorporation passage quoted above clearly 

acknowledges such differences in the form of “improvements” and “enhancements” over Severinsky. See J.A. 

11,174 (“This application discloses a number of improvements over and enhancements to the hybrid vehicles 

disclosed in [Severinsky.]”); see also J.A. 11,176 (“[I]t is 

desired to . . . provid[e] a substantially simplified parallel 

hybrid system as compared to those shown in the prior 

art, again as including the ’970 [Severinsky] patent.”). 

Yet, the function of that sentence is to incorporate Severinsky despite such differences.

Even if the second sentence in the ’817 application’s 

incorporation clause could be read as a narrow incorporation, 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 disclosures of the two 

applications,” and that the second clause’s narrower 

language did not diminish the scope of incorporation. Id. 

at 1335–36. Similarly, here, the first sentence in the 
24 PAICE LLC v. FORD MOTOR COMPANY

passage quoted above incorporates the entire disclosure of 

Severinsky, and the second sentence—even if relevant to 

incorporation—does not negate or otherwise 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 distinguish Harari on grounds that, in that case, there were 

two incorporation clauses separated by several paragraphs 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-toback” in the ’817 application would inform a skilled artisan that differences are not incorporated therein. Id. at 

27:53–28:20.

Ford’s purported distinction 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 application’s incorporation passage provides no nexus between 

the “differences” referenced in the second sentence and 

the incorporation referenced in the first sentence, in 

contrast 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 of 
PAICE 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 incorporated 

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”). There is no reasonable basis to conclude that 

the ’817 application’s second sentence limits the incorporation set forth in the first sentence.

Ford also asserted for the first time at oral argument

that our decisions 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 1236 (Fed. Cir. 2016), support the Board’s ruling. 

But, in both cases, we found that the incorporation clauses 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 describes 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 1345, 

1346–47 (emphasis omitted). We found that this passage 

adequately “identifie[d] with specificity both what material is being incorporated by reference (foamable polymeric 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 incorporated in its entirety, unlike the much more limited and 

ambiguous clause at issue in Callaway Golf. 
26 PAICE LLC v. FORD MOTOR COMPANY

In Husky Injection, as in Harari, there were two incorporation clauses at issue. The first clause stated that 

“[t]he tie-bar nuts can be secured . . . by any appropriate 

mechanism, such as the pineapple and toothed-ring 

mechanism described in [the prior art patent],” 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 incorporated relevant passages of the prior 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 determine whether the second, broader clause incorporated the 

prior art patent in its entirety. Id. (“It is therefore of no 

consequence whether Glaesener’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 therefore 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 In 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, provides sufficient written description support for 

those claims. And, although the Board analyzed the ’817 

application to determine whether it provides such support, the Board did not analyze Severinsky for that purpose. 

The written description inquiry is a highly factintensive 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 intensely factual, 

and should be dealt with on a case-by-case basis, without 

the application of wooden rules”). We therefore remand 

for the Board to determine in the first instance whether 

the ’817 application, with Severinsky incorporated therein, supplies 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 914 n.4. The ’347 patent specification contains

the same incorporation language at issue here.

7 Although 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 provides written description support for the electrical limitations recited in the ’634 patent claims. See 606 IPR, slip 

op. at 9 (agreeing with Ford that, for purposes of obviousness, Severinsky “teaches the specific voltage, current, 

and ratio values recited by the challenged claims”). 
28 PAICE LLC v. FORD MOTOR COMPANY

Finally, with respect to the electrical claims that recite a low electrical current—i.e., a current below approximately 75 amperes or 150 amperes, see, e.g., ’634 patent, 

col. 63, ll. 30–31 (claim 58); id., col. 86, ll. 52–54 (claim 

293)—Paice argues that the Board erred in finding that 

the ’817 application, standing alone, does not provide 

adequate written description support. We do not address 

that argument here. If, on 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. CONCLUSION

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, 242–51, 268–77, 292–93, and 

298 of the ’634 patent are obvious over the ’455 PCT 

publication in view of Severinsky, and remand for proceedings consistent with this opinion.

AFFRIMED IN APPEAL NO. 17-1406

AFFIRMED IN PART, VACATED IN PART, AND 

REMANDED IN APPEAL NOS. 17-1387, 17-1388, 

17-1390, 17-1457, AND 17-1458

COSTS

No costs.