Trials@uspto.gov
`571.272.7822
`
`Paper No. 17
`Filed: November 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AM GENERAL LLC,
`Petitioner,
`
`Vv.
`
`UUSI, LLC,
`Patent Owner.
`
`Case IPR2016-01050
`Patent 6,148,258
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`KAUFFMAN,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CER. § 42.108
`
`
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`EXHIBIT 2007
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`571.272.7822
`
`Paper No. 17
`Filed: November 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AM GENERAL LLC,
`Petitioner,
`
`Vv.
`
`UUSI, LLC,
`Patent Owner.
`
`Case IPR2016-01050
`Patent 6,148,258
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`KAUFFMAN,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CER. § 42.108
`
`
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`Case IPR2016-01050
`Patent 6,148,258
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`A.
`
`OVERVIEW
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`I.
`
`INTRODUCTION
`
`AM General LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”’)
`requesting inter partes review ofclaims 1, 9, 11, 12, 17, 18, and 29-31 of
`U.S. Patent No. 6,148,258 (Ex. 1001, “the ’258 patent”). Pet. 1. UUSI,
`
`LLC (“Patent Owner”)filed a Preliminary Response (Paper8,“Prelim.
`Resp.”) to the Petition. Pursuant to our authorization (Ex. 1012), Petitioner
`filed a reply to Patent Owner’s Preliminary Response (Paper 10, “Reply”),
`
`and Patent Ownerfiled a Sur-Reply (Paper 11, “Sur-Reply”).
`
`Uponconsideration of the record to this point, for the reasons
`explained below, Petitioner has demonstrated a reasonablelikelihood of
`prevailing with respect to at least one of the challenged claims. Weinstitute
`an inter partes review ofclaims 1, 11, 12, 17, 18, and 29-31 of the °258
`
`patent.
`
`B.
`
`RELATED PROCEEDINGS
`
`The parties indicate that the ’258 patentis at issue in the United States
`
`Court of Federal Claims (“CoFC”) under 28 U.S.C. § 1498, captioned UUSI,
`LLC, et al. v. United States, Case No. 1:12-cv-00216. Pet. 6; Paper5, 2.!
`
`This Petition is part of a family of cases as indicated in the chart
`
`below.
`
`' The pages of this Exhibit are not numbered; we consider the cover page to
`be page 1.
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`review No.
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`
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`No.
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`6,148,258
`(“the ’258 patent”
`
`
`
`
`
`
`
`2016-01051
`5,729,456
`
`
`“the °456 patent”)
`
`See Prelim. Resp. 18-19; Pet. 11-12.
`
`Note
`
`
`
`
`
`
`CIP of *369 patent
`
`Continuation-in-part
`(CIP) of °456 patent
`CIP of 08/042,239,
`now abandoned
`CIP of °666 patent
`
`As shownabove, the ’258 patent is a continuation—in-part of the
`
`application that matured into the ’369 patent, which is a continuation-in-part
`
`of the application that matured into the °456 patent, which is a continuation-
`
`in-part of the application that matured into the ’666 patent, which is a
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`continuation-in-part of application 08/042,239, now abandoned.
`
`The *258 patent was filed on May 12, 1998. Ex. 1001, [22].
`
`Il. PRELIMINARY MATTERS
`
`A.
`
`STATUTORY BAR UNDER 35 U.S.C. § 315(b)
`
`Patent Ownerargues that the Petition is barred under § 315(b) because
`
`it was filed more than | year after: (1) the United States Government (which
`
`Patent Owner contendsis a privy of Petitioner) was served with a complaint
`
`in the U.S. Court of Federal Claims (“CoFC”) alleging infringementofthe
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`°666 patent under 28 U.S.C. § 14987; (2) Petitioner, as an interested party to
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`the CoFC proceeding, was served with a Rule 14 Notice/Summons, together
`
`with a copy of the complaint; (3) the Government and Petitioner both were
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`served with an amended complaint in the CoFC proceeding. Prelim. Resp.
`
`1--18. For the sake of consistency, we rely upon our analysis ofthis issue in
`
`the institution decision of IPR2016-01049 and incorporate that analysis
`
`herein. There we determined that Petitioner does not lack standing under
`
`§ 315(b). For the same reasons, we determine that Petitioner here also does
`
`not lack standing under § 315(b).
`
`B.
`
`35U.S.C. § 325(d)
`
`Patent Ownercontends that the Board has denied institution, where, as
`
`here, the prior art was presented during prosecution. Prelim. Resp. 48
`
`(citing Ceramtec Gmbh vy. Ceramedic, LLC, Case IPR2015-00424 (PTAB
`
`July 7, 2015) (Paper 9) and Microboards Tech., LLC v. Stratasys, Inc., Case
`
`IPR2015-00287 (PTAB May 28, 2015) (Paper 13)).
`
`Patent Owner’s argumentis unpersuasive. Patent Owner does not
`
`identify the statutory basis of the rejection (i.e., § 102 or § 103) and does not
`
`identify or provide any portion of the relevant prosecution history. Further,
`
`the cases cited by Patent Ownerare distinguishable. In each of the non-
`
`* See Zoltek Corp. v. United States, 672 F.3d 1309, 1327-28 (Fed. Cir. 2012)
`(en banc) (holding that “28 U.S.C. § 1498(a) creates an independent cause of
`action for direct infringement by the Governmentorits contractors that is
`not dependent on 35 U.S.C. § 271(a)” and “[w]hen the United States is
`subject to suit under § 1498(a) for alleged infringement of a patent by a
`contractor acting by and for the United States, the contractor by law is
`rendered immunefrom individual lability for the alleged infringement”).
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`precedential cases cited by Patent Owner, the Board denied a ground of
`unpatentability, in part, because the Examiner had previously considered the
`same or substantially the same argument with regardto a rejection during
`prosecution based on the sameprior art. Ceramtec Gmbh, Paper 9, 12;
`Microboards, Paper 13, 7-12. Here, in contrast, the °258 patent was not
`subject to a rejection based on Auth. See Pet. 11-12, 16-17 (citing the
`applicable portions of the prosecution history (Ex. 1002) and contending that
`the °258 patent issued following a rejection under 35 U.S.C.§ 112(2) and
`two amendments). Patent Owner has not shownthat the same or
`substantially the same prior art or argument was previously considered, and
`accordingly we decline to exercise our discretion to deny any ground of
`
`unpatentability under 35 U.S.C. § 325(d).
`
`UI. THE CLAIMED SUBJECT MATTER
`
`A.
`
` THE’258 PATENT
`
`The ’258 patent relates to improvements in control, performance,
`diagnostics, monitoring, adaptability, and compensation pertaining to
`glowplugs, starter motor actuation, and battery powerapplication for diesel
`engine applications? Ex. 1001, 1:18-23. The invention is used in a self-
`propelled vehicle or other piece of equipment powered byan internal
`combustion engine. Jd. at 1:26-29.
`As background, the Specification describes that diesel engines have
`no spark plug or spark ignition. /d. at 1:44-45. Rather, ignition for diesel
`enginesrelies on adding various amounts of supplementalheat to the
`
`3 The °258 patent presents this term both as a single word (“glowplug”) and
`as two words(“glow plug”). See, e.g., Ex. 1001, 1:42, 6:17.
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`combustion chamberprior to and during engine cranking. /d. at 1:44—63.
`
`Diesel engine glowplug heaters (“glowplugs”) are one such heat source. Id.
`
`at 1:63-67.
`
`Diesel engines having glowplugs are included in a wide variety of
`
`vehicles (e.g., trucks, buses, infantry vehicles) and glowplug control is of
`
`vital importance to diesel engine performance. Jd. at 1:32-34, 3:4—5.
`
`Considerable warning and protection equipment must be incorporated into
`
`glowplug control systems because vehicle operators have a wide range of
`
`skill levels and improperoperation of the glowplugs can lead to a variety of
`
`problems. /d. at 2:42—3:3; 3:34-37. For example, excessive energization
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`time wastes energy, delays engine start, and causes higher temperatures,
`
`which significantly shortens the life of the glowplugs, and insufficient
`
`energization can result in lack of engine start, excessive cranking time,
`
`starter motor wear, undesirable emissions, and increased fuel consumption.
`
`Id. at 2:1-10; see also Prelim. Resp. 19-22 (describing glowplug technology
`
`and associated problems with support from the Declaration of Dr. Lequesne
`
`(Ex. 2001)).
`
`To overcomethese problems, the claimed invention includes
`
`improvedcircuitry that incorporates a multiplicity of desirable
`
`characteristics to implementsafe, reliable, and efficient operation of the
`
`components of a diesel engine electrical control system. Ex. 1001, 3:27-32.
`
`The preferred embodiment is used with a motor vehicle diesel engine
`
`having one or more glowplugs 12. This embodiment includes both housing
`
`70 supported by the motor vehicle, and a connectorfor routing signals from
`
`a vehicle mounted powersource that energizes the glowplugs. /d. at 6:48—
`
`55. Figure 3 of the ’258 patent follows:
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`?
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`"
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`CUI
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`200
`
`Fig.3
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`70-4
`
`Figure 3 is a diagram of an embodiment showing an engine electrical
`starting system (EESS) havingaprotective control box (PCB) and a
`glowplug controller. Jd. at 5:14-17. Monitorcircuitry is supported within
`the housing interior to provide an indicator signal correspondingto a voltage
`applied to the one or more glowplugs. Jd. at 6:55-58. Programmable
`controller 150 is: supported within the housinginterior, coupled to the
`monitor circuity, and produces a control output for supplying energy to the
`glowplugs. Jd. at 6:58-61. A switching device supported within the housing
`interior is coupled to the contro! output from the programmable controller
`and energizes the one or more glowplugs in a controlled time sequenceprior
`to initiation of combustion in the diesel engine. /d. at 6:61~-65. A signal
`representing alternator speed can be determined from the frequency of the
`alternating component ofthe voltage at the field coil R tap and may be used
`for load dump protection.
`/d. at 5:22-28, 8:31-34; Figs. 5, 6C.
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`B.
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`ILLUSTRATIVE CLAIM
`
`Claim 1 is the sole challenged independent claim and reads as
`
`follows:
`
`For use with a motor vehicle diesel engine having one or
`1.
`more glowplugs for maintaining temperature control of one or
`more diesel engine combustion chambers, apparatus comprising:
`a) a starter control housing supported by the motorvehicle
`and including a cable connector for routing energization signals
`into a housing interior from a vehicle mounted powersource for
`use in energizing the glowplugs;
`b) monitorcircuitry supported within a housing interior for
`providing an indicator signal corresponding to a voltage applied
`to the one or more glowplugs;
`c) a programmable controller supported within the housing
`interior that is coupled to the monitor circuitry and produces a
`control output for supplying energy to the glowplugs;
`d) at
`least one switching device supported within the
`housing interior that is coupled to the control output from the
`programmable controller
`for energizing the one or more
`glowplugs in a controlled time sequence prior to, during an/or
`after engine cranking by selectively coupling the energization
`signals to the glowplugs; and
`e) load protection circuitry supported within the housing
`interior for temporarily maintaining an alternator to battery
`powercorrection after removal or an ignition signal until engine
`speed has been reduced to a specified value.
`
`C.
`
`CLAIM INTERPRETATION
`
`I,
`
`Applicable standard
`
`In the Petition, Petitioner contends that the ’258 patent is expired and
`
`consequently the claim terms should be construed pursuantto the principles
`outlined in Phillips rather than under a broadest reasonable interpretation.
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`Pet. 12 (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc). In the Preliminary Response, Patent Owner contends that some
`claims are expired while otherare not, and also contends that the prosecution
`history should be consulted. Prelim. Resp. 26.
`In response to these assertions, we directed the parties to specify
`which claims are expired and any relevant portions of the prosecution
`history. See Paper 13. In response, Patent Ownerasserts that claims 17 and
`18 recite new matter that is not disclosed in the related parent applications,
`
`and forthat reason, these claims expire on May 12, 2018. Paper 14, 1-4.
`
`Patent Owner acknowledgesthat the remaining challenged claims are
`expired. Jd. at 4. Petitioner respondsthat all claims of the °258 patent
`expired on November14, 2012, “due to nonpayment of maintenance fee.”
`Paper 15, 1 (citing Ex. 1013).
`Indeed, Exhibit 1013 indicates that the 258 patent is expired. Thus,
`all of the challenged claims are expired, and accordingly, we interpret the
`challenged claims in a mannersimilarto that applied by a District Court.
`See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2013). Specifically, claim
`terms are generally given their ordinary and customary meaning, as would
`be understood by a person ofordinary skill in the art at the time of the
`invention, in light of the language of the claims, the specification, and the
`prosecution history of record. Phillips, 415 F.3d at 1313-17. Petitioner’s
`burden of proof remains a preponderanceof the evidence. 35 U.S.C.
`
`§ 316(e).
`Forthe purposes of this decision, and on this record, we determine
`that only the following claim terms need express interpretation. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
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`(stating that only those terms that are in controversy need to be construed,
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`and only to the extent necessary to resolve the controversy). We emphasize
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`that the claim constructions in this Decision are preliminary. Duringthis
`
`proceeding, the parties may further develop argument and evidence
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`regarding claim construction as appropriate.
`
`2.
`
`Errors (claims 1, 9, and 17)
`
`Claims 1, 9, and 17 each appearto include errors. We analyze the
`
`claimsin light of the specification to determine whether correction of these
`
`errors is subject to reasonable debate. See Novo Indus., L.P. v. Micro Molds
`
`Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003); see also Apple Inc. v. Achates
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`Reference Publ’g, Inc., Case IPR2013-00080, slip op. at 10-12 (PTAB June
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`3, 2013) (Paper 22%).
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`a)
`
`Claim 1, limitation d
`
`During prosecution, Patent Owner amended limitation d) of claim 1 to
`
`read as follows:
`
`d) at least one switching device [a switching device] supported
`within the housing interior that is coupled to the control output
`so from the programmable controller for energizing the one or
`more glowplugs in a controlled time sequence prior to, during
`and/or after engine cranking [priorto initiation of combustion in
`the diesel engine] by selectively coupling the energization
`signals to the glowplugs; and
`
`* The cited paperis the Institution Decision of the proceeding. The
`proceeding subsequently resulted in a Final Written Decision June 2, 2014,
`Paper 90) that was appealed to and affirmed by the Federal Circuit on an
`unrelated basis (Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652,
`657-58 (Fed. Cir. 2015) (holding that the Board’s determination on a time-
`bar under 35 U.S.C. § 315(b) was not appealable)).
`
`10
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`Ex. 1002(file history of the ’258 patent)’, 488-89; see also Ex. 1002, 46
`(original claim). When the ’258 patent issued, the relevant portion of the
`limitation recited, “during an/or after” rather than “during and/orafter.” See
`
`Ex. 1001, 23:49-55. Petitioner and Patent Owner each contendthisis a
`typographical error. See Pet. 14; Ex. 1008°, Ex. A, 5.’
`In consideration of the claim language and the Specification, for the
`reasonsthat follow, reading the claim as “and/or” is not subject to reasonable
`debate. First, on its face, the claim language appears to be a typographical
`
`error in that the term “and/or” is a commonterm, but the term “an/or”is not.
`
`Second, as explained above, the claim amendmentstated “and/or,” not
`“sn/or.” Had the claim been amendedtostate “an/or,” that change would
`
`have beenreflected in the prosecution history and the absence of such an
`amendmentimplies the error is inadvertent. Third, “and/or” is consistent
`with another claim. Specifically, independent claim 48° recites “coupling
`the controlled output from the programmable controller to at least one a
`switching device supported within the housing interior for energizing the
`one or more glowplugsin a controlled time sequenceprior to during, and/or
`
`> This exhibit is filed in five parts.
`6 Exhibit 1008 is Patent Owner’s claim construction from the related
`litigation.
`7 We note that because an infer partes review is being instituted, Patent
`Ownerwill have an opportunity to move to amend the claims. See 37 CER.
`§ 42.121(a). Provided a motion is authorized, Patent Owner mayalso
`correct via a certificate of correction.
`8 Although claim 48 is not challenged in this proceeding,it remainspart of
`the disclosure of the ’258 patent. See Laitram Corp. v. Rexnord, Inc., 939
`F.2d 1533, 1538 (Fed. Cir. 1991) (differences among claimscan also be a
`useful guide in understanding the meaning ofparticular claim terms).
`
`1]
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`after engine cranking.” Ex. 1001, 28:20—24 (emphasis added). Fourth, such
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`interpretation is consistent with the Specification in that the specification
`
`does not recite the phrase “an/or” or wordsto that effect.
`
`Consequently, a person of ordinary skill in the art would understand
`
`that “an/or” as recited in claim 1 is a typographical error and should be read
`
`as “and/or.”
`
`b)=Claim I, limitation e
`
`During prosecution, Patent Owner amendedlimitation e) of claim 1 as
`
`follows:
`
`e) load protection circuitry supported within the housing
`interior for [maintaining power to current drawing loads of the
`motor vehicle after removal of an ignition signal] temporarily
`maintaining an alternator to battery power correction after
`removal or an ignition signal until engine speed has been reduced
`to_a specified value.
`
`Ex. 1002, 489; see also Ex. 1002, 46 (original claim). The claim issued with
`
`these changes. Ex. 1001, 23:56-60.
`
`Petitioner and Patent Owner each contendthis claim includes two
`
`typographical errors and should read as follows:
`
`load protection circuitry supported within the housing
`interior for temporarily maintaining an alternator to battery
`power[correction] connection after removal [or] of an ignition
`signal until engine speed has been reduced to a specified value.
`
`See Pet. 15; Prelim. Resp. 29-32, 42.
`
`In consideration of the claim languageandthe specification, for the
`
`reasonsthat follow, reading “correction”as “connection” and “or” as “of”is
`
`not subject to reasonable debate. First, on its face, the claim language seems
`
`to contain an error. The limitation states that the circuitry maintains an —
`
`alternator to battery power correction “after removal,” but does not state
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`what is removed. Second,the difference in language is consistent with a
`
`typographical error. In particular, “correct” and “connect” have the same
`
`numberofletters, and the letters that differ are similar in shape (Ze., “r” and
`
`“n’”). Likewise, “of” and “or” have the same numberofletters, and the letter
`
`that differs is similar in shape (/.e., the “r” and the “f”). Third, independent
`
`claim 48 recites an “alternator to battery power connection” (emphasis
`
`added) rather than a “correction,” and no claim other than claim 1 recites an
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`“alternator to battery power correction.” Ex. 1001, 28:6-29 (emphasis
`
`added); Ex. 1008, A, 2; Ex. 1002, 492 (amending claim 48 to this language).
`
`Fourth, the Specification does not support the claim as written. Although the
`
`Specification describes “predictive correction,” this type of correction does
`
`not relate to correction of battery power, and claim 1 does not recite
`
`“predictive” correction. See Ex. 1001, 7:9-15. The Specification (other
`
`than claim 1) does not contain a description of circuitry that maintains an
`
`alternator to battery power “correction” after removal of something orafter
`
`an ignition signal. Further, the Specification provides several examples of
`
`maintaining an alternator to battery “connection” after removal “of” an
`
`ignition signal. For example, the Specification describes
`
`An optional method to control load dump induced voltage spikes
`is to hold the alternator-to-battery power connection for a short
`period after the ignition key is switched to the off position while
`immediately dropping out the glowplug load so as to remove the
`glowplug load dump from being sourced solely by the alternator.
`Ex. 1001, 12:16-21; see also 3:60—-63 and 6:65—7:1 (describing maintaining
`
`powerafter removal of an ignition signal), 22:14-19 (EESS 110 prohibits
`
`glowplugs cycling if alternator 22 is running when poweris appliedto the
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`start run switch 20).
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`13
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`A person of ordinary skill in the art would understand that limitation e
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`of claim 1 contains two typographical errors and should read as recited
`
`below:
`
`load protection circuitry supported within the housing
`interior for temporarily maintaining an alternator to battery
`power connection after removalof an ignition signal until engine
`speed has been reduced to a specified value.
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`ce)
`
` Claim9
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`9. The apparatus of claim 1 wherein the programmable
`controller comprises a microprocessor and further wherein
`analog signals routed into the housing representing a voltage
`signals
`from the power
`source
`are performed by the
`microprocessor.
`
`Ex. 1001, 24:50—54 (emphasis added). This is the same language as the
`
`original claim. Ex. 1002, 47.
`
`In the related litigation, Patent Owner contended that “a voltage
`
`signals” should be interpreted as “voltage signals.” Ex. 1008, Ex. A, 2
`
`(citing Ex. 1001, 3:43--50, 6:48--55, 9:47-54, claim 9, claim 1 limitations(a)
`
`and (d)). In this proceeding, Patent Owneroffers no construction regarding
`
`claim 9.’ Petitioner contends that Patent Owner’s interpretation from the
`
`related litigation should apply here. Pet. 16-17.
`
`For the reasons that follow, we cannot determine the scope of claim 9.
`
`Claim 9 recites “a voltage signals.” This phrase is unclear because use of
`
`the term “a” is appropriate with a singular noun (signal), but not with a
`
`plural noun (signals). Perhaps the phrase was meant to be “a voltage signal”
`
`and perhaps it was meant to be “voltage signals.” Either possibility is
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`* Patent Owner“reserves its rights to offer constructions of the limitations
`in the dependent claims should the Board decide to institute the Petition.”
`Prelim. Resp. 44 n.3.
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`consistent with the language of the claim in that the analog signals could
`becomeone or more voltage signals. We considered the portions ofthe
`Specification identified by Patent Owneraslisted above. However, these
`disclosures do not clarify which ofthe two possibilities was intended. Nor
`does the prosecution history shed light on this ambiguity. The parties do not
`identify any relevant portions of the prosecution history.'? The correct
`interpretation of the claim is subject to reasonable debate.
`Beyondthis ambiguity, claim 9 recites that “analog signals routed into
`the housing .
`.
`. from the power source are performed by the
`microprocessor.” Emphasis added. The claim doesnotstate any action that
`is “performed” by the microprocessoron the analog signals. It is unclear
`how the analog signals can be both “from” the power source yet
`“nerformed” by the microprocessor. We discern no disclosure in the
`Specification thatclarifies this ambiguity.
`The scope of claim 9 cannot be determined without speculation, and
`for that reason the differences between the claim and the prior art cannot be
`
`ascertained. Consequently, we do not consider any ground of
`unpatentability related to claim 9. See generally, Am. Honda Motor Co.v.
`Signal IP. Inc., Case 1PR2015-01003, slip op. at 11-13 (PTAB Oct. 1, 2015)
`(Paper 11) (denying institution due to lack of clarity in the claim term
`“concentrated”); Samsung Display Co. v. Gold Charm Ltd., Case {PR2015-
`01452, slip op. at 12-13 (PTAB Nov. 13, 2015) (Paper 12) (denying
`institution due to lack of clarity in the claim terms “channel” and “channel
`
`length”).
`
`10 Patent Owner’s discussion of prosecution history related to claim 1 does
`not shed light on this aspect of claim 9. See Paper 14, 3-5.
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`15
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`d)=Claim 17
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`Asoriginally filed, claim 17 recited, “the apparatus of claim 1
`
`additionally comprising a remote temperature sensor positioned outside the
`
`housing for monitoring engine temperature,” but when the ’258 patent
`
`issued, it recited “positoned” rather than “positioned.” Ex. 1002, 48; Ex.
`
`1001, 25:10-12. The parties contend that “positoned”is a typographical
`error and should be “positioned.” Pet. 15; Ex. 1008, Ex. A, 2-3.
`In consideration of the claim language and the Specification, for the
`
`reasons that follow, reading “positoned”as “positioned”is not subject to
`
`reasonable debate. First, on its face the, claim language seems to contain an
`
`error, The term “positoned”is not a word. Second, had the claim been
`
`amendedto recite “positoned” instead of “positioned,” that change would
`
`have been reflected in the record and the absence of such an amendmentin
`
`the file history implies the error is typographical. Third, such interpretation
`
`is consistent with the Specification in that the Specification does notrecite
`
`the term “positoned.”
`
`Consequently, a person of ordinary skill in the art would understand
`
`that “positoned”as recited in claim 17 is a typographical error and should be
`
`read as “positioned.”
`
`3.
`
`monitor circuitry (all claims)
`
`Claim 1 recites, “monitor circuitry supported within a housing interior
`
`for providing an indicator signal corresponding to a voltage applied to the
`
`one or more glowplugs.”
`
`Patent Owner contendsthat this limitation should be construed to
`
`mean “circuitry within the glowplug controller housing that monitors
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`electrical characteristics ofthe glowplugs and providesan indicator signal
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`16
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`that correspondsto a voltage applied to the one or more glowplugs.” Prelim.
`Resp. 32-34 (emphasis added). Petitioner does notoffer a claim
`construction other than the generalassertion that the ordinary meaning
`applies. See Pet. 12-13. For the reasons that follow, we disagree with
`Patent Owner’sassertion that the claimed monitorcircuit monitors electrical
`
`characteristics of the glowplugs;rather, voltage is the sole characteristic that
`
`is monitored.
`
`Claim 1 does not recite that the monitor circuity monitors electrical
`
`characteristics of the glowplugs; rather, claim | recites that the circuitry
`provides an indicator signal corresponding to a voltage applied to the one or
`
`more glowplugs.
`Patent Owneridentifies portions of the Specification that describe
`monitoring various characteristic of the glowplugs and modifying
`energization of the glowplugs based on those inputs. Prelim. Resp. 32-34
`(citing Ex. 2001 fff 44-45). None of these disclosures amounts to a
`lexicographical definition. At most, Patent Ownerhasidentified that other
`characteristics may be monitored, but such examples are not incorporated
`into claim 1. As the Federal Circuit stated in SuperGuide Corp. v. DirecTV
`
`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004):
`Though understanding the claim language may be aided by the
`explanations contained in the written description,it is important
`not to import into a claim limitations that are not a part of the
`claim. For example, a particular embodiment appearing in the
`written description may not be read into a claim whenthe claim
`language is broader than the embodiment.
`Likewise, Dr. Lequesne’s testimony supports that other characteristics may
`be monitored, but does not warrant incorporating such monitoring into claim
`
`1. See Ex. 2001 {4 44-45.
`
`17
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`As Patent Owner acknowledges, the Specification discloses that
`
`sensing “voltage and/or current”is preferred. Prelim. Resp. 34 (emphasis
`
`added); Ex. 1001, 9:22-25. Use of the phrase “and/or” indicates that (1)
`
`voltage and current may both be sensed (monitored) and (2) only voltage or
`
`only current may be sensed. Indeed, consistent with such interpretation,
`
`claim 28 depends from claim | and adds monitoring the current through one
`
`or more of the glowplugs. See Liebel-Flarsheim Co. v. Medrad, Inc., 358
`
`F.3d 898, 910 (Fed. Cir. 2004) (the presence of a dependent claim that adds a
`
`particular limitation gives rise to a presumption that the limitation in
`
`question is not present in the independent claim).
`
`Further, various dependent claims add monitoring of glowplug
`
`characteristics other than voltage applied. For example, claim 22 adds
`
`monitoring glowplug resistance, suggesting that such limitation is not
`
`present in claim 1.
`
`Monitorcircuitry as claimed must monitor voltage applied to one or
`
`more glowplugs, but does not require monitoring other glowplug
`
`characteristics.
`
`4.
`
`Means based on sensed conditions (claims 29-31)
`
`Claim 29 depends from independentclaim | and recites, “wherein the
`
`programmable controller comprises means based upon various sensed
`conditions to adjust a preglow energization time and an afterglow
`
`energization time to limit excessive temperatures of the glowplugs while
`
`applying adequate glowplug energy to facilitate engine starting and
`
`warmup.” Claims 30 and 31 contain this limitation by virtue of dependence
`
`from claim 29.
`
`18
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`Petitioner contendsthis limitation should be construed pursuant to 35
`
`U.S.C. § 112(6) as means-plus-function language. Pet. 13-14. Petitioner
`
`contends that the corresponding structure is a microprocessor programmed
`to provide preglow and afterglow periods accordingto the algorithmsin
`chart 1 and according to the timing diagram in Figure 2. /d. at 14 (citing Ex.
`
`1001, Abstract, 3:33-42, 3:64-4:37, 8:36~43, 11:6-24, 22:52--54, Chart 1,
`
`Fig. 2).
`
`Other than the general assertion regarding the applicable claim
`
`interpretation standard, Patent Owner does not address this limitation. See
`
`Prelim. Resp. 26—34.
`
`At this point in the proceeding we agree with Petitioner’s assertion
`
`that 35 U.S.C. § 112(6) is applicable to this limitation. Further interpretation
`
`is not needed at this time.
`
`5.
`
`Until (claim I)
`
`Petitioner interprets “until” as claimed to mean “up to the point, but
`
`not thereafter.” Pet. 13 (citing Ex. 1010, 4, def. 3). Patent Owner makes no
`
`argumentregarding this claim term. See Prelim. Resp. 26-34.
`Weagree with Petitioner that the ordinary meaning is consistent with
`the Specification, and accept Petitioner’s construction as our preliminary
`
`interpretation. See Pet. 13; see, e.g., Ex. 1001, 13:18-20.
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`19
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`IV. PATENTABILITY
`
`A.|EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`
`Petitioner asserts that claims 1, 9, 11, 12, 17, 18, and 29-31 are
`unpatentable under 35 U.S.C. § 103(a) over Auth and Hansen.'! Pet. 18-57.
`As acontingent alternative ground of unpatentability, Petitioner contends
`
`that claims 1, 9, 11, 12, 17, 18, and 29-31 are unpatentable under 35 U.S.C.
`§ 103 as obvious over Auth, Hansen, and Erdman.’? Pet. 2-5.
`
`Petitioner relies upon the Declaration of Mr. Arthur MacCarley, Ph.D.
`
`(Ex. 1003). Patent Owner includes the Declaration of Dr. Bruno Lequesne.
`
`Ex. 2001; see also Ex. 2002 (Dr. Lequesne’s curriculum vitae).
`
`B.
`
`|OBVIOUSNESS OVER AUTH AND HANSEN
`
`L.
`
`Introduction
`
`Petitioner contends that claims 1, 9, 11, 12, 17, 18, and 29-31 are
`
`unpatentable under 35 U.S.C. § 103 as obvious over Auth and Hansen. Pet.
`2-5, 18-21, 25-57. Generally, Petitioner contends that Auth discloses the
`
`apparatus of claim 1 except that Auth does not explicitly disclose a housing
`
`or load protection circuity, and Petitioner relies on Hansen for such
`
`disclosures. Pet. 25-42.
`
`Auth discloses a system for controlling the temperature of a hot spot
`
`of a glowplug in an internal combustion engine. Ex. 1004, [54]. The control
`
`11 Auth, U.S. Patent 4,658,772, issued Apr. 21, 1987 (Ex. 1004). Hansen,
`U.S. Patent 4,209,816, issued June 24, 1980 (Ex. 1005).
`2 Erdman, U.S. Patent 5,023,527, issued June 11, 1991 (Ex. 1006).
`3 Petitioner also provides a Declaration to certify that Exhibits 1001, 1002,
`1004-1008, and 1010 are true and correct copies. Ex. 1011.
`
`20
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`unit ofAuth’s device “responds to the output signal of a computing unit
`
`responsive to various engine operation parameters, including especially a
`
`signal representative of the rate of feeding fuel to the engine.” Jd. at
`
`Abstract; see also Pet. 2—4 (providing an overview ofAuth).
`
`Hansen discloses a protective control for vehicle starter and electrical
`
`systems. Ex. 1005, [54]. Hansen’s de
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