`
`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: IPR2019-01402
`
`U.S. Patent No. 10,138,826
`
`____________
`
`
`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 .................................................................................................. 7
`
`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
`
`B. GROUND 2: RUBBERT IN VIEW OF YUUSHIRO AND BOSCH .......15
`
`1. Rubbert and Yuushiro can be combined .................................................. 16
`
`2. Rubbert and Yuushiro disclose the DI terms ........................................... 18
`
`3. Rubbert in View of Yuushiro and Bosch disclose the use
`
`of spark retard to reduce the fraction of DI fuel ....................................... 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
`
`’826 Patent
`
`U.S. Patent No. 10,138,826
`
`Ex. 1002
`
`’826 File History File History of U.S. Patent No. 10,138,826
`
`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
`
`’166 File History File History of U.S. Patent No. 9,810,166
`
`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
`
`’826
`Infringement
`Contentions
`
`MIT’s/EBS’s Preliminary Infringement
`Chart (Ex. D – U.S. Patent No. 10,138,826),
`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.
`
`Moreover, 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”), 16-22. Patent Owner’s position is wrong and unsupported.
`
`1. “Spark Ignition Engine” is merely an intended use.
`
`Claims 1, 12, 21, and 31 relate to a “fuel management system for a spark
`
`ignition engine.” These claims 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).
`
`The term “fuel management system” is found in the title, abstract,
`
`specification, and claims. In contrast, the mechanical and ignition engine
`
`components 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 engine components).
`
`- 2 -
`
`
`
`
`
`Thus, the recitation of “spark ignition engine” is a non-limiting intended use.
`
`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 term
`
`“engine” is not a positive recitation but instead 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.
`
`Reliance on the term “spark retard” is likewise misplaced. POR, 16. Indeed,
`
`Claim 31 provides antecedent basis for “spark retard” in Claims 32 and 33
`
`independent of the recitation of “spark ignition engine” in Claim 31. As such, “spark
`
`retard” does not derive its basis from “spark ignition engine.”
`
`
`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 -
`
`
`
`
`
`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” is not used in the specification or claims. Patent Owner’s
`
`meandering explanation of “spark knock” relies on a single reference to “end-gas,”
`
`occurring where ethanol is directly injected in a swirl. POR, 20 (citing Ex. 1001,
`
`5:29-30). Mr. Hannemann admitted, however, that end-gas occurs in other engines
`
`besides spark ignition engines and thus 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
`
`no support. Nowhere does the ’826 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
`
`- 4 -
`
`
`
`
`
`characterized by using a spark to initiate the ignition timing. 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” DI
`
`amount. POR, 24-25; 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 DI amount/quantity. POR, 23 (““Knock is prevented”
`
`and “prevent knock,”” hereinafter “knock-free terms” for Dependent Claims 3-8, 23,
`
`24, 32, 33); POR, 24 (“Substantially equal to the fraction needed to prevent knock”
`
`for Dependent Claims 4-8, 23, 24, 32, 33). Petitioner addresses these terms in a
`
`single section and refers to them as “DI terms.” See POR, 23-25; see also Ex. 2002,
`
`¶¶87-96.
`
`Patent Owner requires the Board to import lengthy constructions for the “DI
`
`terms” to achieve this “just right amount” that are unsupported in the patent. For the
`
`“knock-free terms,” Patent Owner imposes a requirement that DI fuel use 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.” POR, 23 (emphasis original). The claims do not require this—
`
`- 5 -
`
`
`
`
`
`they merely require DI and knock prevention.2 See, e.g., Petition, 24-28; Ex. 1003,
`
`¶¶209-248. No further construction is necessary.
`
`For “substantially equal to the fraction needed to prevent knock,” Patent
`
`Owner and Petitioner use the terms “substantially equal” and “minimizes”
`
`interchangeably. See, e.g., POR, 25; Ex. 2002, ¶95; Petition, 24-28, 25; Ex. 1003,
`
`¶¶209-248. There is no support, however, for Patent Owner’s further requirement
`
`that the DI fuel amount is “sufficiently high so that knock is prevented” and “a low
`
`enough fraction of directly injected fuel that is no more than reasonably necessary
`
`to prevent knock.” POR, 25 (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,
`
`27 (emphasis original). Mr. Hannemann agreed, testifying that the patent teaches
`
`that if the fuel management system has control over 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 ethanol use to a small portion of the drive
`
`cycle and to a small fraction of fuel used by the engine. Ex. 1001, 2:47-50; see also
`
`
`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 -
`
`
`
`
`
`Ex. 1003, ¶¶49, 210. This reduction is important because the ’826 Patent describes
`
`its antiknock agent as being difficult to obtain compared to readily available
`
`gasoline. Ex. 1001, 2:9-13. Indeed, the patent limits the ethanol tank to 1.8 gallons
`
`for an automobile having a twenty-gallon tank. Ex. 1001, 6:48-50. In conjunction
`
`with the specification, the claims merely require minimization or reduction of overall
`
`DI use generally, nothing more. See, e.g., Petition, 24-28; Ex. 1003, ¶¶209-248. No
`
`further construction is needed.
`
`The ’826 Patent fails to disclose how the POSITA would 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 DI use is minimized or reduced, as is presented throughout the
`
`Petition. See, e.g., Ex. 1001, 2:26-42; see also, Ex. 1003, ¶¶214-248; Petition, 24-
`
`28. As such, Patent Owner’s specific, non-enabled constructions are wrong. POR,
`
`23-25.
`
`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
`
`- 7 -
`
`
`
`
`
`cylinder by direct injection.” Ex. 1049, 25.3 Dr. Clark confirmed “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 improve efficiency and reducing emissions.” See
`
`Ex. 1003, ¶362. The ’826 Patent provides no disclosure as to what is meant by the
`
`term (Paper 10, 33, fn. 13), and thus the agreed-upon construction should be adopted
`
`here.
`
`Patent Owner creates an argument where none exists by arguing that Dr. Clark
`
`compared two different engines. Dr. Clark is clear: “spark retard will permit the
`
`engine to operate with reduced direct injection without altering the propensity of the
`
`engine to knock.” Ex. 1003, ¶476. In other words, spark retard allows a designer to
`
`achieve a high compression ratio, even if the amount of DI is reduced, thereby
`
`providing an overall more efficient engine. Mr. Hannemann confirms. Ex. 1050,
`
`66:18-23, 67:15-22, 137:20-21; see also Ex. 1003, ¶361.
`
`Patent Owner also suggests that Dr. Clark admitted “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
`
`
`3 Patent Owner directs the Board to Ex. 1001 at 6:65 (see POR, 26), which 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 -
`
`
`
`
`
`retard reduces efficiency at a specific point. Ex. 1003, ¶361. 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 port injected (“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. Patent Owner therefore stipulated to a finding of
`
`non-infringement. Patent Owner does not advocate for a construction here likely
`
`because references cited in the Petition would render the claims unpatentable under
`
`either construction. Nevertheless, because the claim term is not in dispute here, the
`
`Board need not reach a decision on the “fuel terms.” POR, 29-30; see Nidec Motor
`
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 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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`- 9 -
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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
`
`pressure increases until the piston is descending (id., 168:22-169:8, 178:23-179:1),
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`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,
`
`19:67-20:14. A POSITA would have therefore recognized Yuushiro’s DI strategy
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`would be applied to extend Kobayashi’s DI fuel quantity. Ex. 1003, ¶169.
`
`Patent Owner attempts to create a teaching away argument where none exists,
`
`asserting the “operating principle of Yuushiro is incompatible with that of
`
`
`4 The complementary nature of the references is further underscored by the fact that
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`Patent Owner did not and cannot identify a specific teaching away in the references.
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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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`
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`Kobayashi.” POR, 31. Its supposed justification is Kobayashi’s engine has a “limit”
`
`that would be exceeded by Yuushiro’s additional DI fuel. POR, 31-32. Not so. Mr.
`
`Hannemann acknowledged that the only “limit” taught by Kobayashi is a limit based
`
`on the engine’s propensity to knock. Ex. 1050, 165:18-20; 166:9-167:15. Yuushiro
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`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, 34. This
`
`ignores the use of Yuushiro’s fuel map in Kobayashi’s engine but instead focuses on
`
`one reference at a time.5 When Kobayashi and Yuushiro are read together as
`
`proposed, there is no inconsistency in the heavy load regime. Petition, 15-17; Ex.
`
`1003, ¶¶161-166, 182-184; Ex. 1005, 11:57-64, 15:65-16:4, 16:16-27; Ex. 1006,
`
`¶¶[0017], [0039], [0055].
`
`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, 36 (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
`
`
`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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`
`
`
`
`three-way catalysts and supported emissions reduction as he stated in his
`
`Declaration. Ex. 1003, ¶164. Indeed, a three-way catalyst would have been necessary
`
`at the time of Kobayashi. 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, ¶¶164-166.
`
`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. There is therefore 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, 19-20.
`
`Patent Owner’s sole remaining argument is that Kobayashi’s 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
`
`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, ¶171;
`
`- 12 -
`
`
`
`
`
`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 without merit, as the
`
`’826 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, 5:50-57 with Ex. 1050,
`
`50:16-22; Ex. 1031, 358) and employs stratified charge. Compare Ex. 1001, 5:16-
`
`28 with Ex. 1050, 46:11-15; Ex. 1031, 367.
`
`3. Kobayashi in view of Yuushiro discloses the DI terms
`
`Patent Owner’s arguments regarding the DI terms in dependent Claims 3-8,
`
`23, and 24 fail. POR, 40-49. There is no dispute that the combination discloses the
`
`fraction of DI fuel is increased in such a way that “knock is prevented” or is
`
`“substantially equal to the fraction needed to prevent knock” and that DI provides a
`
`physical causative effect—cooling. See, e.g., Ex. 1050, 41:25-42:25, 96:11-20; Ex.
`
`2004, 91:20-92:2; Ex. 2005, 8:21-9:4.
`
`Kobayashi discloses that hydrogen gas (or other fuel) is injected to prevent
`
`knock. Ex. 1005, 11:57-64, 12:8-13. Additionally, Yuushiro 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
`
`- 13 -
`
`
`
`
`
`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 that knock is prevented,
`
`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 fraction of fuel that is directly
`
`injected is increased in such a way that “knock is prevented” or is “substantially
`
`equal to the fraction needed to prevent knock.” Petition, 24-25. Similar to the ’826
`
`Patent’s desire to reduce ethanol, Kobayashi suggests minimization of overall DI
`
`use by relying on a small amount of DI fuel. Ex. 1005, 25:21-22, 25:58; Ex. 1001,
`
`6:45-53.
`
`Further, Yuushiro limits the DI fuel amount (Qd) to the fuel amount 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
`
`DI amount of DI in such a way that knock is prevented such that the maximum
`
`amount of PI fuel (Qb) is maintained. See Petition, 22-25. Yuushiro further teaches
`
`that the DI fuel amount is substantially equal to the fraction needed to prevent knock
`
`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, ¶159.
`
`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 DI amount substantially equal to that necessary (no more). Ex. 1050, 135:22-
`
`136:1, 137:12-17; see also Petition, 13-14, 20-25; Ex. 1003, ¶¶160, 175, 188, 212-
`
`213.
`
`B. GROUND 2: RUBBERT IN VIEW OF YUUSHIRO AND
`
`BOSCH
`
`Rubbert teaches a spark ignition engine. POR, 49. Rubbert also teaches
`
`knock-free operation across all load ranges. POR, 54. Patent Owner, however,
`
`- 15 -
`
`
`
`
`
`complains that Rubbert does not provide implementation details. Patent Owner’s
`
`arguments fall flat, as Rubbert includes the same specificity as the ’826 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 specific values of DI fuel and spark timing are calibration details
`
`finalized later during engine development); see also id., 123:21-125:21; 163:18-
`
`164:3; 175:16-21.
`
`While Petitioner 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,
`
`¶¶354-358; see also Petition, 34-35.
`
`1. Rubbert and Yuushiro can be combined
`
`Petitioner explained that a POSITA would implement Rubbert’s concise
`
`disclosure by employing “the DI strategy of Yuushiro…to extend the DI fuel
`
`quantity of Rubbert.” Petition, 36; see also Ex. 1003, ¶¶354-358. Patent Owner, in
`
`an attempt 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,
`
`50. 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, ¶370; Ex. 1007, 1:49-2:3. Because Yuushiro teaches such a ratio (see
`
`- 16 -
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`
`
`
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`§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, ¶358.
`
`Moreover, the POSITA would have understood that engines employ various
`
`strategies at low loads. For example, as outlined in Bosch, engines use many
`
`different mechanisms to maintain stable combustion. See, e.g., Ex. 1031, 358, 416,
`
`437. Some may use a rich fuel mixture (Ex. 1031, 356, 358, 428), whereas others
`
`increase intake heating to prevent ignition failure. Ex. 1006, ¶¶[0010], [0013]; see
`
`also Ex. 1031, 416. The only distinction between Rubbert and Yuushiro is that
`
`Rubbert teaches using some DI in the low load zone (Ex. 1050, 174:24-175:11),
`
`whereas Yuushiro teaches intake heating instead of DI. Ex. 1006, ¶¶[0010], [0013].
`
`According to Bosch, both rich fuel mixture and intake heating are known substitutes
`
`and would not dissuade or teach the POSITA away from the combination.
`
`Patent Owner’s argument about the heavy load regime is likewise baseless.
`
`POR, 49-50. Mr. Hannemann confirmed that Rubbert does not provide any “specific
`
`values for the injection amounts of DI and PI,” but that in the full load range “mostly
`
`DI [is used] and the PI amounts decreasing perhaps to zero.” Ex. 1050, 173:10-19;
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