`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FORD MOTOR COMPANY
`
`Petitioner
`
`v.
`
`ETHANOL BOOSTING SYSTEMS, LLC, and MASSACHUSETTS INSTITUTE
`
`OF TECHNOLOGY,
`
`Patent Owner
`
`____________
`
`Case: IPR2019-01399
`
`U.S. Patent No. 9,810,166
`
`____________
`
`
`PETITIONER’S REPLY BRIEF
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .............................................................................................. 1
`
`II. CLAIM CONSTRUCTION ............................................................................... 2
`
`A. Spark Ignition Engine ................................................................................... 2
`
`1. “Spark Ignition Engine” is merely an intended use. .................................. 2
`
`2. Reference to “engine” and “spark retard” are of no moment. .................... 3
`
`3. The claims require prevention of “knock”, nothing more. ......................... 4
`
`4. Patent Owner’s construction should be rejected ........................................ 4
`
`B. DI Terms ....................................................................................................... 5
`
`C. Spark Retard .................................................................................................. 8
`
`D. District Court Construction ........................................................................... 9
`
`III. ARGUMENT ................................................................................................... 10
`
`A. GROUND 1: KOBAYASHI IN VIEW OF YUUSHIRO ..........................10
`
`1. Combination of Kobayashi with Yuushiro ............................................... 10
`
`2. Kobayashi in view of Yuushiro discloses a spark ignition engine........... 12
`
`3. Kobayashi in view of Yuushiro discloses the DI terms ........................... 13
`
`4. Kobayashi in view of Yuushiro discloses Claim 5 .................................. 15
`
`B. GROUND 2: RUBBERT IN VIEW OF YUUSHIRO AND BOSCH .......16
`
`1. Rubbert and Yuushiro can be combined .................................................. 16
`
`2. Rubbert and Yuushiro disclose the DI terms ........................................... 19
`
`
`
`i
`
`
`
`
`
`C. GROUND 3: KINJIRO IN VIEW OF BOSCH ..........................................20
`
`1. Kinjiro and Bosch can be combined ......................................................... 20
`
`2. Kinjiro and Bosch disclose the DI terms .................................................. 21
`
`3. “Spark retard” is a variable that controls knock. ...................................... 25
`
`IV. CONCLUSION ................................................................................................ 26
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
`320 F.3d 1339 (Fed. Cir. 2003) ............................................................................ 3
`
`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) .............................................................................. 2
`
`In re Fought,
`941 F.3d 1175 (Fed. Cir. 2019) ............................................................................ 3
`
`Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd.,
`357 F.3d 1319 (Fed. Cir. 2004) .......................................................................... 10
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) ............................................................................ 9
`
`TomTom, Inc. v. Adolph,
`790 F.3d 1315 (Fed. Cir. 2015) ............................................................................ 2
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`
`
`
`
`
`
`LIST OF EXHIBITS
`
`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1001
`
`’166 Patent
`
`U.S. Patent No. 9,810,166
`
`Ex. 1002
`
`’166 File History File History of U.S. Patent No. 9,810,166
`
`Ex. 1003
`
`Clark
`Declaration
`
`Declaration of Dr. Nigel N. Clark under 37
`C.F.R. §1.68
`
`Ex. 1004
`
`Clark CV
`
`Curriculum Vitae of Dr. Nigel N. Clark
`
`Ex. 1005
`
`Kobayashi
`
`U.S. Patent No. 7,188,607
`
`Ex. 1006
`
`Yuushiro
`
`Japanese Patent Application Publication No.
`JPH10252512
`
`Ex. 1007
`
`Rubbert
`
`German Patent Application No.
`DE19853799
`
`Ex. 1008
`
`Kinjiro
`
`Japanese Patent Application Publication No.
`JP2002227697
`
`Ex. 1009
`
`RESERVED
`
`RESERVED
`
`Ex. 1010
`
`’784 File History File History of U.S. Patent No. 9,695,784
`
`Ex. 1011
`
`’519 File History File History of U.S. Patent No. 9,255,519
`
`Ex. 1012
`
`’410 File History File History of U.S. Patent No. 8,857,410
`
`Ex. 1013
`
`’321 File History File History of U.S. Patent No. 8,733,321
`
`Ex. 1014
`
`’746 File History File History of U.S. Patent No. 8,522,746
`
`Ex. 1015
`
`’580 File History File History of U.S. Patent No. 8,302,580
`
`Ex. 1016
`
`’568 File History File History of U.S. Patent No. 8,146,568
`
`iv
`
`
`
`
`
`
`
`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1017
`
`’839 File History File History of U.S. Patent No. 8,069,839
`
`Ex. 1018
`
`’572 File History File History of U.S. Patent No. 7,971,572
`
`Ex. 1019
`
`’233 File History File History of U.S. Patent No. 7,762,233
`
`Ex. 1020
`
`’004 File History File History of U.S. Patent No. 7,740,004
`
`Ex. 1021
`
`’033 File History File History of U.S. Patent No. 7,314,033
`
`Ex. 1022
`
`Complaint
`
`Ex. 1023
`
`Defendant’s
`Answer
`
`Ex. 1024
`
`Plaintiff’s
`Answer
`
`Complaint for Patent Infringement, Ethanol
`Boosting Sys LLC v. Ford Motor Co., D.I. 1,
`C.A. No. 19-cv-196-CFC (D. Del. Jan. 30,
`2019)
`
`Defendant’s Answer, Defenses,
`Counterclaims and Jury Demand, Ethanol
`Boosting Sys LLC v. Ford Motor Co., D.I. 1,
`C.A. No. 19-cv-196-CFC (D. Del. March 25,
`2019)
`
`Answer to Defendant’s Counterclaims,
`Ethanol Boosting Sys LLC v. Ford Motor
`Co., D.I. 1, C.A. No. 19-cv-196-CFC (D.
`Del. April 15, 2019)
`
`Ex. 1025
`
`Heywood
`
`John B. Heywood, Internal Combustion
`Engine Fundamentals (1988)
`
`Ex. 1026
`
`’735 File History File History of U.S. Patent No. 8,082,735
`
`Ex. 1027
`
`’157 File History File History of U.S. Patent Application No.
`11/758,157
`
`Ex. 1028
`
`RESERVED
`
`RESERVED
`
`Ex. 1029
`
`RESERVED
`
`RESERVED
`
`v
`
`
`
`
`
`
`
`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1030
`
`’717 File History File History of U.S. Patent Application No.
`13/591,717
`
`Ex. 1031
`
`Bosch
`
`Bosch Automotive Handbook (3rd Ed.)
`
`Ex. 1032
`
`Stokes
`
`J. Stokes et al. “A gasoline engine concept
`for improved fuel economy—the lean-boost
`system,” SAE paper 2000-01-2902, 1-12
`
`Ex. 1033
`
`RESERVED
`
`RESERVED
`
`Ex. 1034
`
`Csere
`
`Csere, C. “A Smarter Way to use Ethanol to
`Reduce Gasoline Consumption,” (2007),
`https://www.caranddriver.com/features/a151
`47006/a-smarter-way-to-use-ethanol-to-
`reduce-gasoline-consumption/
`
`Ex. 1035
`
`’100 File History File History of U.S. Patent Application No.
`15/463,100
`
`Ex. 1036
`
`’166
`Infringement
`Contentions
`
`MIT’s/EBS’s Preliminary Infringement
`Chart (Ex. C – U.S. Patent No. 9,810,166),
`Ethanol Boosting Sys LLC v. Ford Motor
`Co., D.I. 35, C.A. No. 19-cv-196-CFC (D.
`Del. July 1, 2019)
`
`Ex. 1037
`
`Mullins
`Declaration
`
`Declaration of Dr. James L. Mullins under
`37 C.F.R. §1.68
`
`Ex. 1038
`
`Mullins CV
`
`Curriculum Vitae of Dr. James L. Mullins
`
`Ex. 1039
`
`’839
`Infringement
`Contentions
`
`MIT’s/EBS’s Preliminary Infringement
`Chart (Ex. A – U.S. Patent No. 8,069,839),
`Ethanol Boosting Sys LLC v. Ford Motor
`Co., D.I. 35, C.A. No. 19-cv-196-CFC (D.
`Del. July 1, 2019)
`
`vi
`
`
`
`
`
`
`
`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1040
`
`Ex. 1041
`
`Markman
`Hearing
`Transcript
`
`Transcript of the Markman Hearing, Ethanol
`Boosting Sys LLC v. Ford Motor Co., C.A.
`No. 19-cv-196-CFC (D. Del. Jan. 8, 2020)
`
`Claim
`Construction
`Order
`
`Markman Order, Ethanol Boosting Sys LLC
`v. Ford Motor Co., D.I. 140, C.A. No. 19-cv-
`196-CFC (D. Del. Jan. 28, 2020)
`
`Ex. 1042
`
`RESERVED
`
`RESERVED
`
`Ex. 1043
`
`RESERVED
`
`RESERVED
`
`Ex. 1044
`
`RESERVED
`
`RESERVED
`
`Ex. 1045
`
`RESERVED
`
`RESERVED
`
`Ex. 1046
`
`RESERVED
`
`RESERVED
`
`Ex. 1047
`
`RESERVED
`
`RESERVED
`
`Ex. 1048
`
`RESERVED
`
`RESERVED
`
`Ex. 1049
`
`Joint Claim
`Construction
`Brief
`
`Joint Claim Construction Brief, Ethanol
`Boosting Sys LLC v. Ford Motor Co., D.I.
`109, C.A. No. 19-cv-196-CFC (D. Del. Dec.
`6, 2019) (page cites herein refer to stamped
`numbers on bottom right)
`
`Ex. 1050
`
`Hannemann
`Deposition
`Transcript
`
`Transcript of the Deposition of Mr. Neil E.
`Hannemann, August 12, 2020, IPR2019-
`01399
`
`(Note: By agreement of the parties,
`testimony from this deposition will be
`admissible across the related IPR
`proceedings).
`
`vii
`
`
`
`
`
`
`
`
`
`
`
`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1051
`
`Anderson
`
`Anderson, R. W., Yang, J., Brehob, D. D.,
`Vallance, J. K., and Whiteaker, R. M.,
`"Understanding the Thermodynamics of
`Direct Injection Spark Ignition (DISI)
`Combustion Systems: An Analytical and
`Experimental Investigation", presented at
`SAE International Fall Fuels & Lubricants
`Meeting, 962018, 1996
`
`viii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner obtained overly broad claims that are unpatentable. To combat
`
`the Board’s findings and to supplement its already rejected arguments, Patent Owner
`
`spends its Response telling the Board that the claims should be interpreted extremely
`
`narrowly. Patent Owner is wrong.
`
`For example, Patent Owner creates an elaborate, unsupported construction for
`
`“spark ignition” and likewise creates its own novel method of engine classification.
`
`Yet Patent Owner’s expert admitted that he had never applied Patent Owner’s
`
`proposed classification.
`
`Rather than relying on the specific claim language that generically describes
`
`using direct injection (“DI”) to prevent knock, Patent Owner and its expert argue
`
`there is an amount of fuel that is “just right.” But neither Patent Owner nor its expert
`
`can explain the actual value of “just right.” Once Patent Owner’s Goldilocks-like
`
`requirement is properly rejected, what remains is the plain language of the claim—
`
`load-based DI to obtain knock-free operation.
`
`Patent Owner unsuccessfully attempts to support its arguments by relying on
`
`an expert who did not even perform an analysis of the claim terms. Ex. 1050, 156:18-
`
`22; 157:5-15. Worse still, Patent Owner’s expert has purportedly made his career in
`
`numerous product liability cases against Petitioner. Ex. 1050, 8:21-9:4. For at least
`
`these reasons, no weight should be given to Mr. Hannemann.
`
`- 1 -
`
`
`
`
`
`When Patent Owner’s improper constructions and arguments are unpacked,
`
`the Board has multiple grounds to choose from that render the claims unpatentable.
`
`II. CLAIM CONSTRUCTION
`
`A. Spark Ignition Engine
`
`Patent Owner spends roughly seven pages arguing that one term—“spark
`
`ignition engine”—should be interpreted as limiting. Patent Owner Response
`
`(“POR”), 16-23. Patent Owner’s position is wrong and without support.
`
`1. “Spark Ignition Engine” is merely an intended use.
`
`Claims 1 and 19 relate to a “fuel management system for a [turbocharged]
`
`spark ignition engine.” Claims 1 and 19 are quintessential examples of an intended
`
`use, as they use the word “for” to define a use for the “fuel management system.”
`
`TomTom, Inc. v. Adolph, 790 F.3d 1315, 1324 (Fed. Cir. 2015).
`
`Indeed, the claims recite features of a fuel management system but remain
`
`silent as to the mechanical structure of the engine itself. Catalina Mktg. Int'l, Inc. v.
`
`Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). Even the preamble of
`
`Claim 22, which only recites “[a] spark ignition engine,” still must be considered an
`
`intended use, as it merely describes an environment, whereas the body of the claim
`
`describes a fuel management system. See id., 289 F.3d at 809.
`
`The term “fuel management system” is found in the title, abstract,
`
`specification, and claims. In contrast, the mechanical and ignition components of an
`
`- 2 -
`
`
`
`
`
`engine are merely mentioned at a high level and never are claimed. See, e.g., Ex.
`
`1001, Abstract (referencing a cylinder); Ex. 1050, 28:10-36:21 (distinguishing the
`
`fuel management system from the mechanical components of an engine).
`
`Thus, the recitation of “spark ignition engine” is an intended use and is not
`
`limiting.
`
`2. Reference to “engine” and “spark retard” are of no
`
`moment.
`
`Patent Owner also alleges that because the claims recite the term “engine,”
`
`the preamble becomes limiting. POR, 16. This cannot be true because the engine is
`
`not a positive recitation but instead is a term that provides context to a result of an
`
`operation of the fuel management system. See, e.g., Boehringer Ingelheim
`
`Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).1
`
`In each circumstance, the term “engine” is used in conjunction with a result, e.g.,
`
`“operat[ing] in the first range of torque.” The term “engine” thus only defines the
`
`results of injection by the claimed fuel management system.
`
`
`1 Fought is distinguishable as the recitation of “engine” is not a structural limitation.
`
`In re Fought, 941 F.3d 1175, 1178-79 (Fed. Cir. 2019).
`
`- 3 -
`
`
`
`
`
`Reliance on the term “spark retard” is likewise misplaced. POR, 16-17.
`
`Indeed, Claim 11 provides its own antecedent basis for the term “spark retard.” As
`
`such, “spark retard” does not derive its basis from “spark ignition engine.”
`
`3. The claims require prevention of “knock”, nothing
`
`more.
`
`Patent Owner attempts to limit the generically claimed “knock” to a “knock”
`
`specific to “spark ignition engines,” i.e., “spark knock.” POR, 17-20. Patent Owner’s
`
`argument is incorrect and circular (e.g., “knock” breathes life into “spark ignition
`
`engine” and “spark ignition engine” reverts to define a particular type of “knock”).
`
`“Spark knock,” moreover, is not used in the specification or claims. Indeed,
`
`Patent Owner’s meandering explanation of “spark knock” relies on a single
`
`reference to “end-gas,” occurring where DI of ethanol is added to a particular region
`
`of the engine in a swirl. POR, 20 (citing Ex. 1001, 5:26-27). Mr. Hannemann
`
`admitted, however, that end-gas occurs in other engines besides spark ignition
`
`engines, so Patent Owner’s reliance on this single reference to end-gas does not limit
`
`the generic “knock” in the claims. Ex. 1050, 50:2-7.
`
`4. Patent Owner’s construction should be rejected
`
`Patent Owner also requires the Board to import an extensive, fifty-word
`
`definition. POR, 20-21. Patent Owner’s lengthy and complicated construction finds
`
`- 4 -
`
`
`
`
`
`no support. Nowhere does the ’166 Patent discuss (1) local ignition, (2) flames or
`
`flame fronts, or (3) how the flame front burns fuel.
`
`Patent Owner’s construction represents an obvious attempt to adopt a
`
`construction in order to eliminate a prior art reference. If a construction is necessary,
`
`the Board should adopt Dr. Clark’s definition—a spark ignition engine is
`
`characterized by using a spark to initiate the timing of ignition. See Ex. 2005, 18:24-
`
`19:2, 19:10-11, 19:15-16; see also Ex. 1050, 25:23-26:10, 27:18-22, 28:4-9
`
`(classifying engines by method of ignition).
`
`B. DI Terms
`
`Patent Owner advocates for constructions that result in the “just right” amount
`
`of DI. POR, 25-26; Ex. 2002, ¶¶94-95; Ex. 1050, 144:21-25, 146:25-147:10, 147:23-
`
`25, 150:4-11. Patent Owner does this by providing additional terms for construction
`
`relating to the amount/quantity of DI. POR, 23 (“‘So as to obtain knock-free
`
`operation,’ ‘a value that prevents knock,’ and ‘so as to prevent knock that would
`
`otherwise occur,’” hereinafter “knock-free terms”); POR, 25 (“Amount of directly
`
`injected fuel used to provide knock-free operation is minimized”). Petitioner
`
`addresses these terms in a single section and refers to them as “DI terms.” See POR,
`
`23-26; see also Ex. 2002, ¶¶87-96.
`
`Patent Owner requires the Board to import lengthy and complicated
`
`constructions for the “DI terms” to achieve this “just right amount” that find no
`
`- 5 -
`
`
`
`
`
`support in the ’166 Patent. For the “knock-free terms” in the “DI terms,” Patent
`
`Owner imposes a requirement that the use of DI fuel not only results in knock-free
`
`operation but also provides “a physical causative effect of the evaporation of the
`
`directly injected fuel on suppressing knock, resulting in preventing knock or
`
`obtaining knock-free operation.” POR, 24 (emphasis added). The claims do not
`
`require this—instead, they merely require DI and knock prevention.2 See, e.g.,
`
`Petition, 22-24; Ex. 1003, ¶¶182-187. No further construction is necessary.
`
`Similarly, for “amount of directly injected fuel used to provide knock-free
`
`operation is minimized,” there is no support for Patent Owner’s further requirement
`
`that the amount of DI fuel is “sufficiently high so that knock free operation is
`
`obtained” and “a low enough amount of directly injected fuel that is no more than
`
`reasonably necessary to prevent knock.” POR, 25-26 (emphasis original). Patent
`
`Owner’s construction here is also inconsistent with its infringement contentions—
`
`“DI is used only when the engine cannot operate within a second fueling system such
`
`as PFI alone.” Ex. 1036, 17 (emphasis original). Mr. Hannemann agreed, testifying
`
`that the ’166 Patent teaches that if the fuel management system has control over
`
`
`2 Irrespective, any argument that it was innovative to use DI to “provide air charge
`
`cooling” is misplaced. Ex. 1003, ¶31; see also Ex. 1051, 3; Ex. 1050, 42:3-4, 7-20.
`
`- 6 -
`
`
`
`
`
`other engine parameters, a choice can be made as to what type and how much fuel
`
`to add. Ex. 1050, 135:12-136:14.
`
`The claims and specification limit the use of ethanol to a small portion of the
`
`drive cycle and to a small fraction of fuel used by the engine. Ex. 1001, 2:44-47; see
`
`also Ex. 1003, ¶¶49, 183. Reducing ethanol usage is important because the ’166
`
`Patent describes its antiknock agent as being difficult to obtain compared to readily
`
`available gasoline. Ex. 1001, 2:6-10. Indeed, the ’166 Patent limits the ethanol tank
`
`to 1.8 gallons when installed in an automobile having a twenty-gallon tank. Ex.
`
`1001, 6:46-48. In conjunction with the specification, the claims merely require
`
`minimization or reduction of overall DI use generally, nothing more. See, e.g.,
`
`Petition, 22-24; Ex. 1003, ¶¶182-187. No further construction is needed.
`
`As such, the ’166 Patent fails to disclose how the POSITA is to determine this
`
`“just right” DI amount that Patent Owner requires. Lacking any specific disclosure,
`
`all that is left is the plain language of the claims, namely that DI is used to prevent
`
`knock while overall use of DI is minimized or reduced as is presented throughout
`
`the Petition. See, e.g., Ex. 1001, 2:23-39; see also, Ex. 1003, ¶¶182-187; Petition,
`
`22-24. As such, Patent Owner’s specific but non-enabled proposed constructions
`
`cannot be correct. POR, 23-26.
`
`- 7 -
`
`
`
`
`
`C. Spark Retard
`
`The parties previously agreed that “employs spark retard so as to reduce the
`
`amount of fuel that is introduced into the cylinder by the first fueling system” means
`
`“uses spark retard so as to reduce the amount of fuel that is introduced into the
`
`cylinder by direct injection.” Ex. 1049, 25.3 Dr. Clark likewise asserted that a
`
`POSITA would have understood “that the use of spark retard would be beneficial to
`
`protect the engine and reduce the amount of fuel that is directly injected[] and thus
`
`improving efficiency and reducing emissions.” See Ex. 1003, ¶291. The agreed upon
`
`construction should be adopted here.
`
`Patent Owner creates an argument where none exists by arguing that Dr. Clark
`
`interpreted the claims in terms of two different engines. Dr. Clark is clear: “spark
`
`retard will permit the engine to operate with reduced direct injection, or even no
`
`direct injection at all, without altering the propensity of the engine to knock.” Ex.
`
`1003, ¶343. In other words, the use of spark retard allows a designer to achieve the
`
`desirable goal of a high compression ratio, even if the amount of DI is reduced,
`
`
`3 On page 27 of the POR, Patent Owner directs the Board to Ex. 1001 at 6:63. This
`
`section refers to a situation where there is no antiknock agent on the vehicle, thereby
`
`confirming the old and well-known use of spark retard—to eliminate knock in PI
`
`fueled engines.
`
`- 8 -
`
`
`
`
`
`which results in an engine that is overall more efficient. Mr. Hannemann confirms.
`
`Ex. 1050, 66:18-23, 67:15-22, 137:20-21; see also Ex. 1003, ¶290.
`
`Patent Owner also suggests that Dr. Clark admitted that “spark retard would
`
`increase the amount of fuel used in a given engine in which the spark retard is used.”
`
`POR, 28 (emphasis original). Dr. Clark never disputes that, in the abstract, spark
`
`retard reduces efficiency at a very specific point. Ex. 1003, ¶290. Dr. Clark does,
`
`however, testify that a POSITA would find it desirable to use spark retard along with
`
`DI to develop an engine that is overall more efficient. Id.; see also, Ex. 1050, 137:12-
`
`138:3 (discussing the interplay of the amounts of PI and DI fuel and spark retard as
`
`variables to increase efficiency).
`
`As such, the PTAB should adopt the previously agreed to construction. Ex.
`
`1049, 25.
`
`D. District Court Construction
`
`The district court judge held in favor of Petitioner regarding the disputed so-
`
`called “fuel terms.” Ex. 1041, 1. As a result, Patent Owner stipulated to a finding of
`
`non-infringement. Patent Owner does not advocate for a construction in this matter
`
`likely because references cited in the Petition would render the claims unpatentable
`
`under either construction. That said, and because the claim term is not in dispute
`
`here, the Board need not reach a decision on the “fuel terms.” POR, 30-31; see Nidec
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`- 9 -
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`
`
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`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
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`2017).
`
`To the extent the term “torque range” requires construction, Petitioner
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`addresses this construction below. See infra §III.C.
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`III. ARGUMENT
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`A. GROUND 1: KOBAYASHI IN VIEW OF YUUSHIRO
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`1. Combination of Kobayashi with Yuushiro
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`Kobayashi and Yuushiro complement one another.4 Both references disclose
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`PI of a lean A/F ratio (Ex. 1050, 167:25-168:7, 178:8-11), injection of a DI fuel
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`before top dead center (“TDC”) (id., 170:6-9, 176:17-19, 178:19-22), reducing
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`pressure increases until the piston is descending (id., 168:22-169:8, 178:23-179:1),
`
`and combustion occurring as the piston descends. Id., 169:4-8, 179:2-4. Yuushiro
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`further teaches the injection of DI fuel over time to result in an ignitable mixture (id.,
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`179:5-16; see also Ex. 1006, ¶[0053]), and Kobayashi explicitly teaches the same
`
`for certain of its disclosed DI fuels. Id., 169:24-170:9, 176:10-24; see also Ex. 1005,
`
`
`4 The complementary nature of the references is further underscored by the fact that
`
`Patent Owner did not and cannot identify a specific teaching away in the reference.
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`Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir.
`
`2004).
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`- 10 -
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`
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`19:67-20:14. A POSITA would have therefore recognized that the use of the DI
`
`strategy of Yuushiro would be applied to extend the DI fuel quantity of Kobayashi.
`
`Ex. 1003, ¶166.
`
`Patent Owner attempts to create a teaching away argument where none exists.
`
`Patent Owner asserts that the “operating principle of Yuushiro is incompatible with
`
`that of Kobayashi.” POR, 31-32. Its supposed justification is that Kobayashi’s
`
`engine has a “limit” that would be exceeded by Yuushiro’s additional DI fuel. POR,
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`32. Not so. Mr. Hannemann acknowledged that the only “limit” taught by Kobayashi
`
`is a limit based on the propensity of the Kobayashi engine to knock. Ex. 1050,
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`165:18-20; 166:9-167:15. Yuushiro teaches the solution to this very problem.
`
`Patent Owner asserts, moreover, that Kobayashi and Yuushiro have
`
`significantly different ways of operating in the heavy load regime. POR, 35. Patent
`
`Owner ignores the use of Yuushiro’s fuel map in Kobayashi’s engine but instead
`
`focuses on a single reference at a time.5 When Kobayashi and Yuushiro are read
`
`together as proposed, there is no inconsistency in the heavy load regime. Petition,
`
`16-17; Ex. 1003, ¶¶158-166, 179-181; Ex. 1005, 11:57-64, 15:65-16:4, 16:16-27;
`
`Ex. 1006, ¶¶[0017], [0039], [0055].
`
`
`5 Patent Owner misleadingly jumps between Kobayashi and Yuushiro individually,
`
`never addressing the combined teachings. POR, 31-37.
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`- 11 -
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`
`
`
`
`Patent Owner also proudly announces that “Prof. Clark admitted that
`
`Kobayashi’s engine would ‘require more complex after-treatments to deal with any
`
`NOx emissions that have arisen.’” POR, 37 (emphasis original). But Kobayashi
`
`alone is all Patent Owner asked about. Had they asked about the combination, Dr.
`
`Clark would have answered that the combination would have enabled conventional
`
`three-way catalysts and supported emissions reduction as he stated in his
`
`Declaration. Ex. 1003, ¶161. Indeed, a three-way catalyst would have been necessary
`
`at the time of Kobayashi’s invention. Ex. 1050, 75:13-14. As such, the POSITA
`
`would have been motivated to combine the references. Ex. 1025, 655; see also
`
`Petition, 15; Ex. 1003, ¶¶161-163.
`
`2. Kobayashi in view of Yuushiro discloses a spark
`
`ignition engine
`
`The POR admits that a “second fuel” “is ignited by a spark plug” in
`
`Kobayashi. POR, 37-38. As such, there is no dispute that (1) Kobayashi discloses a
`
`spark plug, and (2) that spark plug ignites a fuel-air mixture. See id; see also Paper
`
`10, 17-18.
`
`Patent Owner’s sole remaining argument is that the Kobayashi engine is not
`
`a spark ignition engine, but rather a “hybrid engine.” Patent Owner’s support for this
`
`position, however, focuses on the method of combustion, not the method of ignition.
`
`See POR, 19. Mr. Hannemann agreed that “combustion engines [can] be classified
`
`- 12 -
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`
`
`
`
`by ignition type” and that “those two [classification] methods differ from one
`
`another.” Ex. 1050, 25:10-12, 28:2-3. Dr. Clark likewise testified that engine
`
`classifications were not rigid. Ex. 2005, 17:1-11, 18:12-17. Dr. Clark made clear
`
`“that [Kobayashi] is a spark ignition engine,” perhaps “not the traditional spark
`
`ignition engine,” but one nonetheless. Ex. 2005, 18:14-17, 19:10-14; Ex. 1003 ¶168;
`
`see also Ex. 1050, 56:17-20 (“the spark plug ignites the air-fuel mixture at a certain
`
`point.”).
`
`Patent Owner’s distinction based on “hybrid” engines is additionally without
`
`merit, as the ’166 Patent describes a fuel management system that is able to operate
`
`with a hybrid engine in that it requires dual fuels (compare Ex. 1001, Abstract with
`
`Ex. 1031, 367), does not have a homogenous mixture (compare Ex. 1001, 5:48-55
`
`with Ex. 1050, 50:16-22; Ex. 1031, 358) and employs stratified charge. Compare
`
`Ex. 1001, 5:13-25 with Ex. 1050, 46:11-15; Ex. 1031, 367.
`
`3. Kobayashi in view of Yuushiro discloses the DI terms
`
`Patent Owner’s arguments as to the DI terms fail. POR, 40-50. There is no
`
`dispute that the combination discloses the use of DI to obtain knock-free operation
`
`and that DI provides a physical causative effect—cooling. Ex. 1050, 41:25-42:25,
`
`96:11-20; Ex. 2004: 91:20-92:2; see also Ex. 2005, 8:21-9:4.
`
`Specifically, Kobayashi discloses that hydrogen gas (or other fuel) is injected
`
`to prevent knock. Ex. 1005, 12:8-13; see also 11:57-64. In addition, Yuushiro
`
`- 13 -
`
`
`
`
`
`discloses that DI has a physical causative effect: “fuel injected from the in-cylinder
`
`injection valve 16 evaporates near compression top dead center, and the latent heat
`
`of vaporization thereof cools the premixed gas….” Ex. 1006, ¶[0053] (emphasis
`
`added). Taken together and following Mr. Hannemann’s instruction that the entire
`
`mixture in the chamber must be considered, the combination discloses the “knock-
`
`free terms.” Ex. 1050, 133:2-5. That is, the combination not only discloses knock-
`
`free operation, but it does so via DI that cools the cylinder. See Ex. 1003, ¶¶31-33;
`
`see also Ex. 2004, 83:1-16; Ex. 1006, ¶[0053].
`
`The combination likewise discloses that the “amount of directly injected fuel
`
`used to provide knock-free operation is minimized.” Petition, 22-24. Similar to the
`
`’166 Patent’s desire to reduce ethanol, Kobayashi suggests minimizing DI fuel by
`
`relying on a small amount of DI fuel. Ex. 1005, 25:21-22, 25:58; Ex. 1001, 6:43-51.
`
`Further, Yuushiro limits the DI fuel amount (Qd) to the amount of fuel needed
`
`to power the engine without knocking. Paper 10, 22. Yuushiro’s fuel map teaches
`
`only one way to meet the load requirements in the reference load zone—increase the
`
`amount of DI to prevent engine knock such that the maximum amount of fuel that is
`
`port injected (Qb) is maintained. See Petition, 23-24. Yuushiro further teaches that
`
`the amount of DI fuel is minimized according to the formula Qd=Qq-Qb. Ex. 1006,
`
`¶[0039].
`
`- 14 -
`
`
`
`
`
`
`Mr. Hannemann confirmed: “if Yuushiro added additional PI fuel above the
`
`line Qb [] the engine would knock.” Ex. 1050, 183:19-22; see also Ex. 1003, ¶156.
`
`He also confirmed that Yuushiro only adds DI fuel when the engine cannot operate
`
`with PI alone. Id.; see also 179:22-180:2. Only after Yuushiro reaches a point where
`
`it cannot add more PI but needs more fuel to reach a desired load amount does it add
`
`the necessary amount of DI (no more). Ex. 1050, 135:22-136:1, 137:12-17; see also
`
`Petition, 14, 21-24; Ex. 1003, ¶¶157, 174, 186-187.
`
`4. Kobayashi in view of Yuushiro discloses Claim 5
`
`Patent Owner again addresses a single reference and does not address the
`
`combination in its arguments. POR, 50. Kobayashi confirms that adequate values
`
`specified by experimental techniques are set in its fuel map. Ex. 1005, 13:11-13.
`
`Yuushiro supplements, explicit in that its fuel map (see, e.g., Fig. 3) is predetermined
`
`- 15 -
`
`
`
`
`
`as the reference load amount is generated before the initial use of the engine.
`
`Petition, 26-27; Ex. 1003, ¶200.
`
`B. GROUND 2: RUBBERT IN VIEW OF YUUSHIRO AND
`
`BOSCH
`
`Rubbert teaches a spark ignition engine. POR, 50. Rubbert also teaches
`
`knock-free operation across all load ranges. POR, 55. Patent Owner, however,
`
`complains that Rubbert does not provide implementation details. Id. Patent Owner’s
`
`arguments fall flat, as Rubbert includes the same specificity as the ’166 Patent. See,
`
`e.g., Ex. 1050, 112:23-113:20; 118:2-17; 119:22-120:10; 143:16-17; 144:4-16
`
`(testifying that the specific value of DI fuel and spark timing are all calibration
`
`details finalized later during engine development; see also id., 123:21-125:21;
`
`163:18-164:3; 175:16-21.
`
`While Petitioner certainly could have relied on Rubbert alone in Ground 2,
`
`Petitioner relies on the combination to further demonstrate that a POSITA knew how
`
`to implement Rubbert’s engine and would have been motivated to do so. Ex. 1003,
`
`¶¶283-287; see also Petition, 34-35.
`
`1. Rubbert and Yuushiro can be combined
`
`The Petition explained that a POSITA would implement Rubbert’s concise
`
`disclosure by employing “Yuushiro’s DI strategy…to extend the DI fuel quantity of
`
`Rubbert.” Petition, 36; see also Ex. 1003, ¶¶283-286. Patent Owner, in an attempt
`
`- 16 -
`
`
`
`
`
`to rebut this clear-cut motivation to combine and in an about-face from its earlier
`
`attacks about a lack of specificity, attacks Rubbert’s suggested use of DI in the partial
`
`load zone as being “fundamentally inconsistent” with Yuushiro. POR, 51. Yet Mr.
`
`Hannemann rejected this attack, explaining that Rubbert “wouldn’t need the
`
`additional DI” if it operated at a stoichiometric ratio. Ex. 1050, 175:4-7; see also Ex.
`
`1003, ¶299; Ex. 1007, 1:49-2:3. Given that Yuushiro teaches such a ratio (see
`
`§III.A.1, supra), the combination of Rubbert and Yuushiro would operate in the low
`
`load zone, and thus Patent Owner fails to rebut Petitioner’s argument. See, e.g., Ex.
`
`1003, ¶¶286, 323.
`
`That notwithstanding, the POSITA would have understood that engines
`
`employ various strategies at low loads. For example, as outlined in Bosch, engines
`
`may use many different mechanisms to maintain stable combustion. See, e.g., Ex.
`
`1031, 358, 416, 437. In some cases, it may be a rich fuel mixture (Ex. 1031, 356,
`
`358, 428), whereas others increase intake heating to prevent ignition failure. Ex.
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`1006, ¶¶[0010], [0013]; see also Ex. 1031, 416. The only distinction between
`
`Rubbert and Yuushiro is t
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