Ford Motor Company v. Paice LLC & Abell Foundation, Inc.

25 Filed IPRs / Cancel 273 Claims


Siding with attorneys from Brooks Kushman, the Court of Appeals for the Federal Circuit upheld Patent Trial and Appeal Board (PTAB) decisions that invalidated claims in two Paice LLC hybrid vehicle patents, handing an early victory to Ford Motor Company. Paice argued that the (PTAB) lacked substantial evidence to support its finding that various claims involving hybrid electric vehicles and controls were obvious. The PTAB, however, disagreed and ruled that the claims at issue were invalid on obviousness grounds.

This dispute began in 2014 when Paice filed a patent infringement lawsuit against Ford in the U.S. District Court of Maryland. The lawsuit was quickly stayed pending the resolution of 22 inter partes review proceedings filed by Brooks Kushman on behalf of Ford. In total, the Brooks Kushman litigation team created a strategy to challenge 325 claims throughout 2015–2017. The PTAB released written decisions in phases and cancelled 273 claims in total. The PTAB affirmed that 154 of the 222 challenged claims of patent ‘634 were invalid. Furthermore, the PTAB affirmed that all 39 challenged claims of patent ‘097 were invalid. Paice appealed all of the decisions — 229 claims were affirmed invalid on appeal, and 44 claims were vacated and remanded back to the PTAB for further review. Only in rare circumstances is a party permitted to file multiple IPRs; however, because the ‘634 patent was so egregious, the Patent Trial and Appeal Board (PTAB) allowed it.

Paice and the Abell Foundation, Inc. owned several patents related to hybrid vehicle technology. In 2015, they filed infringement lawsuits against several auto companies over the years, including Ford. Hyundai Motor Co. and Kia Motors Corp. owing approximately $29 million for violating the patented technology. Ford, however, was the only auto company to challenge and successfully cancel 273 patent claims.

In 2017, Paice filed a complaint with the U.S. International Trade Commission (ITC) requesting an investigation into the infringement of Paice’s patents by hybrid vehicles Ford imports into the U.S. This investigation would have had significant ramifications for Ford’s ability to import hybrid cars (including the Fusion and Lincoln MKZ models) into the U.S. market. However, in 2018 Brooks Kushman’s team was able to reach an agreement with Paice to license its patents on hybrid vehicle technology with Ford. Subsequently, the ITC investigation was dismissed, and Ford’s market was no longer at risk. 

Brooks Kushman shareholders Frank AngileriSangeeta Shah, John RondiniAndrew Turner, Marc Lorelli, John Nemazi, Erin Bowles, Michael Cushion, Michael MacCallum,  John Halan, Todd Dishman and Chris Smith led the team that resulted in this favorable decision for Ford.


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