Tria1s@uspto.gov
`571.272.7822
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`Paper No. 17
`Filed: November 14, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AM GENERAL LLC,
`
`Petitioner,
`
`V.
`
`UUSI, LLC,
`Patent Owner.
`
`Case IPR2016—01050
`
`Patent 6,148,258
`
`Before PHILLIP 3. KAUFFMAN, MEREDITH C. PETRAVICK, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`
`
`£22
`
`EXHIBIT A
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`EXHIBIT 2007
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`571.272.7822
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`Paper No. 17
`Filed: November 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AM GENERAL LLC,
`
`Petitioner,
`
`V.
`
`UUSI, LLC,
`Patent Owner.
`
`Case IPR2016—01050
`
`Patent 6,148,258
`
`Before PHILLIP 3. KAUFFMAN, MEREDITH C. PETRAVICK, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`
`
`£22
`
`EXHIBIT A
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`EXHIBIT 2007
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`Case IPR2016-01050
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`Patent 6,148,258
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`A.
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`OVERVIEW
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`I.
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`INTRODUCTION
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`AM General LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
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`requesting inter partes review of claims 1, 9, ll, 12, 17, 18, and 29—3l of
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`U.S. Patent No. 6,148,258 (Ex. 1001, “the ’258 patent”). Pet. 1. UUSI,
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`LLC (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim.
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`Resp.”) to the Petition. Pursuant to our authorization (Ex. 1012), Petitioner
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`filed a reply to Patent Owner’s Preliminary Response (Paper 10, “Reply”),
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`and Patent Owner filed a Sur-Reply (Paper 11, “Sur-Reply”).
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`Upon consideration of the record to this point, for the reasons
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`explained below, Petitioner has demonstrated a reasonable likelihood of
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`prevailing with respect to at least one of the challenged claims. We institute
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`an inter partes review of claims 1, ll, 12, 17, 18, and 29-31 ofthe ’258
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`patent.
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`B.
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`RELATED PROCEEDINGS
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`The parties indicate that the ’258 patent is at issue in the United States
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`Court of Federal Claims (“COFC”) under 28 U.S.C. § 1498, captioned UUSI,
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`LLC, et al. v. United States, Case No. 1:12-cv-00216. Pet. 6; Paper 5, 2.‘
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`This Petition is part of a family of cases as indicated in the chart
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`below.
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`‘ 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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`Note
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`
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`No.
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`CIP of’369 patent
`Continuation~in~part
`CIP of08/042,239,
`CIP of’666 patent
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`now abandoned
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`(CIP) of ’-456 atent
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`
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`
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`
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`“the"456 atent”)
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`6 6,148,258
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`6,009,369
`____5,57_(),6_6_6__ _
`g 5,72_o9,45_5 p
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`
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`(“the ’-25 8 I atent"?
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`‘-‘the ’369 aten ”)
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`9“-the 5666 H
`I ”
`I 31161}
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`See Prelim. Resp. 18-19; Pet. ll«l2.
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`As shown above, the ’258 patent is a continuation-«~in—part of the
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`application that matured into the ’369 patent, which is a continuation—in-part
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`of the application that matured into the ’456 patent, which is a continuation-
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`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.
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`The ’258 patent was filed on May 12, 1998. Ex. 1001, [22].
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`II. PRELIM¥NARY MATTERS
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`A.
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`STATUTORY BAR UNDER 35 U.S.C. § 315(b)
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`Patent Owner argues that the Petition is barred under § 3l5(b) because
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`it was filed more than 1 year after: (1) the United States Government (which
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`Patent Owner contends is a privy of Petitioner) was served with a complaint
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`in the U.S. Court of Federal Claims (“COFC”) alleging infringement of the
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`’666 patent under 28 U.S.C. § 14982; (2) Petitioner, as an interested party to
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`the CoFC proceeding, was served with a Rule 14 Notice/Summons, together
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`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.
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`1wl8. For the sake of consistency, we rely upon our analysis of this issue in
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`the institution decision of iPR2016-01049 and incorporate that analysis
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`herein. There we determined that Petitioner does not lack standing under
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`§ 3l5(b). For the same reasons, we determine that Petitioner here also does
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`not lack standing under § 315(b).
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`B.
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`35 U.S.C. §325(d)
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`Patent Owner contends that the Board has denied institution, where, as
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`here, the prior art was presented during prosecution. Prelim. Resp. 48
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`(citing Ceramtec Gmbh v. Ceramedic, LLC, Case IPR2015—00424 (PTAB
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`July 7, 2015) (Paper 9) and Microboards Tech, LLC v. Stratasys, Inc, Case
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`IPR20l5-00287 (PTAB May 28, 2015) (Paper 13)).
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`Patent Owner’s argument is unpersuasive. Patent Owner does not
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`identify the statutory basis of the rejection (i.e., § 102 or § 103) and does not
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`identify or provide any portion of the relevant prosecution history. Further,
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`the cases cited by Patent Owner are distinguishable. In each of the non-
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`2 See Zoltek Corp. v. United States, 672 F.3d 1309, 1327-28 (Fed. Cir. 2012)
`(en banc) (holding that “28 U.S.C. § l498(a) creates an independent cause of
`action for direct infringement by the Government or its 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 immune from individual liability for the alleged infringement”).
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`precedential cases cited by Patent Owner, the Board denied a ground of
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`unpatentability, in part, because the Examiner had previously considered the
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`same or substantially the same argument with regard to a rejection during
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`prosecution based on the same prior art. Ceramtec Gmbh, Paper 9, 12;
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`Microboards, Paper 13, 7-12. Here, in contrast, the ’258 patent was not
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`subject to a rejection based on Auth. See Pet. 11-12, 16-17 (citing the
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`applicable portions of the prosecution history (BX. 1002) and contending that
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`the ’258 patent issued following a rejection under 35 U.S.C. § 112(2) and
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`two amendments). Patent Owner has not shown that the same or
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`substantially the same prior art or argument was previously considered, and
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`accordingly we decline to exercise our discretion to deny any ground of
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`unpatentability under 35 U.S.C. § 325(d).
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`III. THE CLAIMED SUBJECT MATTER
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`A.
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`THE ’258 PATENT
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`The ’258 patent relates to improvements in control, performance,
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`diagnostics, monitoring, adaptability, and compensation pertaining to
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`glowplugs, starter motor actuation, and battery power application for diesel
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`engine applications? Ex. 1001, 1:18-23. The invention is used in a self-
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`propelled vehicle or other piece of equipment powered by an internal
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`combustion engine. Id. at 1:26-29.
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`As background, the Specification describes that diesel engines have
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`no spark plug or spark ignition. Id. at 1:44-45. Rather, ignition for diesel
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`engines relies on adding various amounts of supplemental heat to the
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`3 The ’258 patent presents this term both as a single word (“glowpiug”) and
`as two words (“glow plug”). See, e.g., Ex. 1001, 1:42, 6:17.
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`combustion chamber prior to and during engine cranking. Id. at 1:44-63.
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`Diesel engine glowplug heaters (“glowplugs”) are one such heat source. Id.
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`at l:63—67.
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`Diesel engines having glowplugs are included in a wide variety of
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`vehicles (e.g., trucks, buses, infantry vehicles) and glowplug control is of
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`Vital importance to diesel engine performance. Id. at 1:3 2—34, 3:4—5.
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`Considerable warning and protection equipment must be incorporated into
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`glowplug control systems because vehicle operators have a wide range of
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`skill levels and improper operation of the glowplugs can lead to a variety of
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`problems. Id. at 2242-323; 3:34w37. For example, excessive energization
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`time wastes energy, delays engine start, and causes higher temperatures,
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`which significantly shortens the life of the glowplugs, and insufficient
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`energization can result in lack of engine start, excessive cranking time,
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`starter motor wear, undesirable emissions, and increased fuel consumption.
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`Id. at 211-10; see also Prelim. Resp. 19-22 (describing glowplug technology
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`and associated problems with support from the Declaration of Dr. Lequesne
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`(Ex. 2001)).
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`To overcome these problems, the claimed invention includes
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`improved circuitry that incorporates a multiplicity of desirable
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`characteristics to implement safe, reliable, and efficient operation of the
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`components of a diesel engine electrical control system. Ex. 1001, 3:27-32.
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`The preferred embodiment is used with a motor vehicie diesel engine
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`having one or more glowplngs 12. This embodiment includes both housing
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`70 supported by the motor vehicle, and a connector for routing signals from
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`a vehicle mounted power source that energizes the glowplugs. Id. at 6:48»-
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`55. Figure 3 of the ’258 patent follows:
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`3”
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`‘K
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`as-3
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`Figure 3 is a diagram of an embodiment showing an engine electrical
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`starting system (EESS) having a protective control box (PCB) and a
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`glowplug controller. Id. at 5:14-17. Monitor circuitry is supported within
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`the housing interior to provide an indicator signal corresponding to a voltage
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`applied to the one or more glowplugs. Id. at 6:55—5 8. Programmable
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`controller 150 is: supported within the housing interior, coupled to the
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`monitor circuity, and produces a control output for supplying energy to the
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`glowplugs. Id. at 6:58-61. A switching device supported within the housing
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`interior is coupled to the control output from the programmable controller
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`and energizes the one or more glowplugs in a controlled time sequence prior
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`to initiation of combustion in the diesel engine. Id. at 6:61»-65. A signal
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`representing alternator speed can be determined from the frequency of the
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`alternating component of the voltage at the field coil R tap and may be used
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`for load dump protection. Id. at 5:22-28, 8:3 l—34; "Figs. 5, 6C.
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`B.
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`ILLUSTRATIVE CLAIM
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`Claim 1 is the sole challenged independent claim and reads as
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`follows:
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`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:
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`a) a starter control housing supported by the motor vehicle
`and including a cable connector for routing energization signals
`into a housing interior from a vehicle mounted power source for
`use in energizing the glowplugs;
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`b) monitor circuitry supported within a housing interior for
`providing an indicator signal corresponding to a voltage applied
`to the one or more glowplugs;
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`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;
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`least one switching device supported within the
`d) at
`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
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`e) load protection circuitry supported within the housing
`interior for temporarily maintaining an alternator to battery
`power correction after removal or an ignition signal until engine
`speed has been reduced to a specified value.
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`C.
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`CLAIM INTERPRETATION
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`I .
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`Applicable standard
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`In the Petition, Petitioner contends that the ‘Z58 patent is expired and
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`consequently the claim terms should be construed pursuant to the principles
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`outlined in Phillips rather than under a broadest reasonable interpretation.
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`Pet. 12. (citing Phillips 12. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) (en
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`banc). In the Preliminary Response, Patent Owner contends that some
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`claims are expired while other are not, and also contends that the prosecution
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`history should be consulted. Prelim. Resp. 26.
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`In response to these assertions, we directed the parties to specify
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`which claims are expired and any relevant portions of the prosecution
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`history. See Paper 13. In response, Patent Owner asserts that claims 17 and
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`18 recite new matter that is not disclosed in the related parent applications,
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`and for that reason, these claims expire on May 12, 2018. Paper 14, l—4.
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`Patent Owner acknowledges that the remaining challenged claims are
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`expired. Id. at 4. Petitioner responds that all claims of the ’258 patent
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`expired on November 14, 2012, “due to nonpayment of maintenance fee.”
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`Paper 15, 1 (citing Ex. I013).
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`Indeed, Exhibit 1013 indicates that the "258 patent is expired. Thus,
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`all of the challenged claims are expired, and accordingly, we interpret the
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`challenged claims in a manner similar to that applied by a District Court.
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`See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2013). Specifically, claim
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`terms are generally given their ordinary and customary meaning, as would
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`be understood by a person of ordinary skill in the art at the time of the
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`invention, in light of the language of the claims, the specification, and the
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`prosecution history of record. Phillips, 415 F.3d at 1313-17. Petitioner’s
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`burden of proof remains a preponderance of the evidence. 35 U.S.C.
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`§ 3l6(e).
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`For the purposes of this decision, and on this record, we determine
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`that only the following claim terms need express interpretation. See Vivid
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`Techs, Inc. 11 Am. Sci. & Eng ’g, 1116., 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. During this
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`proceeding, the parties may further develop argument and evidence
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`regarding claim construction as appropriate.
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`2.
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`Errors (claims I, 9, and I 7)
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`Claims 1, 9, and 17 each appear to include errors. We analyze the
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`claims in light of the specification to determine whether correction of these
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`errors is subject to reasonable debate. See Novo Indus, LP. v. Micro Molds
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`Corp, 350 F.3d 1348, 1354 (Fed. Cir. 2003); see also Apple Inc. v. Achates
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`Reference Pub] ’g, Inc, Case IPR20l3—00080, slip op. at 10-12 (PTAB June
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`3, 2013) (Paper 224).
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`a)
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`Claim 1, limitation d
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`During prosecution, Patent Owner amended limitation d) of claim 1 to
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`read as follows:
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`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 [prior to initiation of combustion in
`the diesel engine] by selectively coupling the energization
`signals to the glowplugs; and
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`4 The cited paper is 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 (Achares Reference Publ ‘g, Inc. v. Apple Inc, 803 F.3d 652,
`657~w58 (Fed. Cir. 2015) (holding that the Board’s determination on a time-
`bar under 35 U.S.C. § 3l5(b) was not appealable)).
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`10
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`Ex. 1002 (file history of the ’258 patent)5, 488-89; see also Ex. 1002, 46
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`(original claim). When the ’258 patent issued, the relevant portion of the
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`iimitation recited, “during an/or after” rather than “during and/or after.” See
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`Ex. 1001, 23:49—55. Petitioner and Patent Owner each contend this is a
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`typographical error. See Pet. 14; EX. 10086, Ex. A, 5.7
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`In consideration of the claim language and the Specification, for the
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`reasons that follow, reading the claim as “and/or” is not subject to reasonable
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`debate. First, on its face, the claim language appears to be a typographical
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`error in that the term “and/or” is a common term, but the term “an/or” is not.
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`Second, as explained above, the claim amendment stated “and/or,” not
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`“an/or.” Had the claim been amended to state “an/or,” that change would
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`have been reflected in the prosecution history and the absence of such an
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`amendment implies the error is inadvertent. Third, “and/or” is consistent
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`with another claim. Specifically, independent claim 483 recites “coupling
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`the controlled output from the programmable controller to at least one a
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`switching device supported within the housing interior for energizing the
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`one or more glowplugs in a controlled time sequence prior to during, and/or
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`5 This exhibit is filed in five parts.
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`6 Exhibit 1008 is Patent 0wner’s claim construction from the related
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`litigation.
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`7 We note that because an inter partes review is being instituted, Patent
`Owner wiil have an opportunity to move to amend the claims. See 37 C.F.R.
`§ 42.121(a). Provided a motion is authorized, Patent Owner may also
`correct via a certificate of correction.
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`8 Although claim 48 is not challenged in this proceeding, it remains part of
`the disclosure of the ‘Z58 patent. See Lairram Corp. v. Rexnord, Inc, 939
`F.2d 1533, 1538 (Fed. Cir. 1991) (differences among claims can also be a
`useful guide in understanding the meaning of particular claim terms).
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`ll
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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
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`does not recite the phrase “an/or” or words to that effect.
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`Consequently, a person of ordinary skill in the art would understand
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`that “an/or” as recited in claim 1 is a typographical error and should be read
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`as “and/or.”
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`b)
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`Claim 1, limitation e
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`During prosecution, Patent Owner amended limitation e) of claim 1 as
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`follows:
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`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 batteg power correction after
`removal or an ignition signal until engine speed has been reduced
`to a specified value.
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`EX. 1002, 489; see also EX. 1002, 46 (original claim). The claim issued with
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`these changes. Ex. 1001, 23:56-60.
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`Petitioner and Patent Owner each contend this claim includes two
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`typographical errors and should read as follows:
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`load protection circuitry supported within the housing
`interior for temporarily maintaining an alternator to battery
`power [correction] connection after removal [or] o_f an ignition
`signal until engine speed has been reduced to a specified value.
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`See Pet. 15; Prelim. Resp. 29—32, 42.
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`In consideration of the claim language and the specification, for the
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`reasons that follow, reading “correction” as “connection” and “or” as “of” is
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`not subject to reasonable debate. First, on its face, the claim language seems
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`to contain an error. The limitation states that the circuitry maintains an _
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`alternator to battery power correction “after removal,” but does not state
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`12
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`what is removed. Second, the difference in language is consistent with a
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`typographical error. In particular, “correct” and “connect” have the same
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`number of letters, and the letters that differ are similar in shape (i.e., “r” and
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`“n”). Likewise, “of” and “or” have the same number of letters, and the letter
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`that differs is similar in shape (i.e., the “r” and the “t”). Third, independent
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`claim 48 recites an “alternator to battery power connection” (emphasis
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`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, 28:6w29 (emphasis
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`added); Ex. 1008, A, 2; Ex. 1002, 492 (amending claim 48 to this language).
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`Fourth, the Specification does not support the claim as written. Although the
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`Specification describes “predictive correction,” this type of correction does
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`not relate to correction of battery power, and claim 1 does not recite
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`“predictive” correction. See Ex. 100] , 729-15. The Specification (other
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`than claim 1) does not contain a description of circuitry that maintains an
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`alternator to battery power “correction” after removal of something or after
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`an ignition signal. Further, the Specification provides several examples of
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`maintaining an alternator to battery “connection” after removal “of” an
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`ignition signal. For example, the Specification describes
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`An optional method to control load dump induced voltage spikes
`is to hold the altemator—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.
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`Ex. 1001, 12:16~»2l; see also 3:60-63 and 6:65m7:l (describing maintaining
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`power after removal of an ignition signal), 22:14-19 (BESS 110 prohibits
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`glowplugs cycling if alternator 22 is running when power is applied to 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
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`below:
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`load protection circuitry supported within the housing
`interior for temporarily maintaining an alternator to battery
`power connection after removal of an ignition signal until engine
`speed has been reduced to a specified value.
`
`0)
`
`Claim 9
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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.
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`Ex. 1001, 24:50—54 (emphasis added). This is the same language as the
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`original claim. EX. 1002, 47.
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`In the related litigation, Patent Owner contended that “a voltage
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`signals” should be interpreted as “Voltage signals.” Ex. 1008, Ex. A, 2
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`(citing EX. 1001, 3:43m—50, 6:48»»~55, 924764, claim 9, claim 1 limitations (a)
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`and (d)). In this proceeding, Patent Owner offers no construction regarding
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`claim 9.9 Petitioner contends that Patent Owner’s interpretation from the
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`related litigation should apply here. Pet. 16-17.
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`For the reasons that follow, we cannot determine the scope of claim 9.
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`Claim 9 recites “a Voltage signals.” This phrase is unclear because use of
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`the term “a” is appropriate with a singular noun (signal), but not with a
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`plural noun (signals). Perhaps the phrase was meant to be “a voltage signal”
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`and perhaps it was meant to be “Voltage signals.” Either possibility is
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`9 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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`14
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`consistent with the language of the claim in that the analog signals could
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`become one or more voltage signals. We considered the portions of the
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`Specification identified by Patent Owner as listed above. However, these
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`disclosures do not clarify which of the two possibilities was intended. Nor
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`does the prosecution history shed light on this ambiguity. The parties do not
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`identify any relevant portions of the prosecution history.” The correct
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`interpretation of the claim is subject to reasonable debate.
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`Beyond this ambiguity, claim 9 recites that “analog signals routed into
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`the housing .
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`.
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`. from the power source are performed by the
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`microprocessor.” Emphasis added. The claim does not state any action that
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`is “performed” by the microprocessor on the analog signals. It is unclear
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`how the analog signals can be both “from” the power source yet
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`“performed” by the microprocessor. We discern no disclosure in the
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`Specification that clarifies this ambiguity.
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`The scope of claim 9 cannot be determined without speculation, and
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`for that reason the differences between the claim and the prior art cannot be
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`ascertained. Consequently, we do not consider any ground of
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`unpatentability related to claim 9. See generally, Am. Honda Motor Co. v.
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`Signal IR Inc., Case 1PR20l5~01003, slip op. at 11-13 (PTAB Oct. 1, 2015)
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`(Paper 11) (denying institution due to lack of clarity in the claim term
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`“concentrated”); Samszmg Display Co. 12. Gold Charm Ltd, Case IPR2015-
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`01452, slip op. at 12-13 (PTAB Nov. 13, 2015) (Paper 12) (denying
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`institution due to lack of ciarity in the claim terms “channel” and “channel
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`length”).
`
`1° 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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`cl)
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`Claim 17
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`As originally filed, claim 17 recited, “the apparatus of claim 1
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`additionally comprising a remote temperature sensor positioned outside the
`
`housing for monitoring engine temperature,” but when the ’258 patent
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`issued, it recited “positoned” rather than “positioned.” Ex. 1002, 48; Ex.
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`1001, 25:l0—~12. The parties contend that “positoned” is a typographical
`error and should be “positioned.” Pet. 15; Ex. 1008,
`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
`
`amended to recite “positoned” instead of “positioned,” that change would
`
`have been reflected in the record and the absence of such an amendment in
`
`the file history implies the error is typographical. Third, such interpretation
`
`is consistent with the Specification in that the Specification does not recite
`
`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 contends that this limitation should be construed to
`
`mean “circuitry within the glowplug controller housing that monitors
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`electrical characteristics of the glowplugs and provides an indicator signal
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`16
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`that corresponds to a voltage applied to the one or more glowplugs.” Prelim.
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`Resp. 32-34 (emphasis added). Petitioner does not offer a claim
`
`construction other than the general assertion that the ordinary meaning
`
`applies. See Pet. l2——l3. For the reasons that follow, we disagree with
`
`Patent Owner’s assertion that the claimed monitor circuit 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 I recites that the circuitry
`
`provides an indicator signal corresponding to a voltage applied to the one or
`
`more glowpiugs.
`
`Patent Owner identifies 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 W 4445). None of these disclosures amounts to a
`
`lexicographical definition. At most, Patent Owner has identified that other
`
`characteristics may be monitored, but such examples are not incorporated
`
`into claim 1. As the Federal Circuit stated in .S'uperGuide 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 when the 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 1m 4445.
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`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 1 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.
`
`Monitor circuitry 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 independent claim 1 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.
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`18
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`Petitioner contends this iimitation should be construed pursuant to 35
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`U.S.C. § 112(6) as means-plus-function language. Pet. l3—l4. Petitioner
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`contends that the corresponding structure is a microprocessor programmed
`
`to provide pregiow and afterglow periods according to the algorithms in
`
`chart I and according to the timing diagram in Figure 2. Id. at 14 (citing Ex.
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`1001, Abstract, 3:33-42, 3:64-4:37, 8:36«~43, l1:6—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. 2634.
`
`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 1)
`
`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
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`argument regarding this claim term. See Prelim. Resp. 26-34.
`
`We agree 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:l8—20.
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`19
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`IV. PATENTABILITY
`
`A.
`
`EVIDENCE AND ASSERTED GROUNDS 01: UNPATENTABILITY
`
`Petitioner asserts that claims 1, 9, 11, 12, 17, 18, and 29-31 are
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`unpatentable under 35 U.S.C. § 103 (a) over Auth and Hansen.“ Pet. 18-57.
`
`As a contingent 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.
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`(Ex. 1003 ).l3 Patent Owner includes the Declaration of Dr. Bruno Lequesne.
`
`Ex. 2001; see also Ex. 2002 (Dr. Lequesne’s curriculum vitae).
`
`B.
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`OBVIOUSNESS OVER AUTH AND HANSEN
`
`I .
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`Introduction
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`Petitioner contends that claims 1, 9, ll, 12, 17, 18, and 29~31 are
`
`unpatentable under 35 U.S.C. § 103 as obvious over Auth and Hansen. Pet.
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`2-5, 18~«21, 25-57. Generally, Petitioner contends that Auth discloses the
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`apparatus of claim 1 except that Auth does not explicitly disclose a housing
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`or load protection circuity, and Petitioner relies on Hansen for such
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`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
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`“ Anth, 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 Erdrnan, U.S. Patent 5,023,527, issued June 11, 1991 (Ex. 1006).
`
`‘3 Petitioner also provides a Declaration to certify that Exhibits 1001, 1002,
`10044008, and 1010 are true and correct copies. Ex. 1011.
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`20
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`EXH
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