Paice and the Abell Foundation, an investor, brought the case against Hyundai and Kia in 2012 over the tech in the Sonata and Optima Hybrids, and the court sided in the patent holder's favor in October 2015. The jury ordered the automakers to pay at least $28.9 million, but the judge could have tripled that amount because the infringement was allegedly intentional. Hyundai pledged to appeal the ruling.
Paice's patents come from the work of Alex Severinsky and cover ways to make engines and electric motors work together. The company has a history of defending its tech, including settlements with Toyota and Ford. It also filed another case against the Blue Oval in 2014 over the hybrid or plug-in systems in the C-Max, Fusion, and Lincoln MKZ.
Paice, a pioneer in hybrid electric vehicle technology, has reached an agreement to license all of its hybrid vehicle technology to Hyundai Motor Co. and Kia Motors Corp.
Paice has now licensed all or part of its hybrid vehicle technology portfolio to Toyota, Hyundai/Kia, and Ford – three of the world's six largest automakers. These three companies currently account for 90% of all hybrid vehicle sales in the United States.
"We are gratified to reach a licensing agreement with Hyundai and Kia, who are among the undisputed leaders in the hybrid industry. This agreement further validates the importance of our technology, and we hope to reach additional agreements with other major automakers," said Frances Keenan, chairman of the Paice Board of Directors.
The confidential licensing agreement with Hyundai and Kia brings an end to all litigation between the companies. Paice and the Abell Foundation, a Baltimore-based non-profit organization that invested in Paice, filed a patent infringement lawsuit against Hyundai and Kia in U.S. District Court in 2012. After an eight-day jury trial earlier this year, the jury sided with Paice and Abell, awarding $28,915,600.
Hyundai and Kia currently rank third in U.S. hybrid car sales. Last year, the automakers announced plans to triple the number of fuel-efficient cars they offer and aggressively grow its sales in the eco-friendly car market by 2020.
Dr. Severinsky formed Paice with the support of the University of Maryland incubator program. An independent analysis of 58,000 hybrid vehicle patents found that Paice owns the most dominant hybrid vehicle patent in the world due to its fundamental importance in the development of hybrid vehicles. The study also found that Paice owns four of the Top 10 most influential hybrid vehicle patents in the world – more than Toyota, Ford and Honda combined.
Paice has previously licensed its hybrid technology to Toyota and Ford. Toyota secured a global license for all Paice technology in 2010. Ford signed a limited licensing agreement in 2010 that applied only to Paice's first patent. When the companies were unable to reach a licensing agreement on subsequent patents, Paice filed a patent infringement lawsuit against Ford in 2014. That lawsuit has been stayed pending the resolution of inter partes review proceedings before the U.S. Patent Office.