UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Mercedes-Benz USA, LLC
`
`BMW of North America, LLC,
`
`Petitioners,
`
`v.
`
`Michigan Motor Technologies, LLC
`
`Patent Owner.
`
`IPR2023-01224
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 6,557,540
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Trial and Appeal Board End to End
`System
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ........................................................................................ i
`
`LIST OF EXHIBITS ..............................................................................................iv
`
`I.
`
`CLAIM LISTING ......................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Claim 1 ............................................................................................... 1
`
`Claim 2 ............................................................................................... 1
`
`Claim 7 ............................................................................................... 1
`
`Claim 10 ............................................................................................. 1
`
`Claim 11 ............................................................................................. 1
`
`Claim 14 ............................................................................................. 2
`
`II.
`
`INTRODUCTION ........................................................................................ 3
`
`III.
`
`REQUIREMENTS UNDER 37 C.F.R. 42.104 ............................................. 4
`
`A.
`
`B.
`
`Grounds for Standing .......................................................................... 4
`
`Precise Relief Requested ..................................................................... 4
`
`IV. OVERVIEW OF THE ’540 PATENT .......................................................... 4
`
`V.
`
`PROSECUTION HISTORY ....................................................................... 11
`
`VI.
`
`THE HYUNDAI AND VOLKSWAGEN IPRS .......................................... 11
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART ......................................... 12
`
`VIII. CLAIM CONSTRUCTION ........................................................................ 12
`
`A.
`
`Claims 1, 2, 6, and 8: “engine performance command”..................... 13
`
`IX.
`
`SUMMARY OF PRIOR ART .................................................................... 14
`
`A.
`
`B.
`
`C.
`
`Ogawa............................................................................................... 14
`
`Yoshioka ........................................................................................... 17
`
`Jankovic ............................................................................................ 19
`
`i
`
`

`

`
`
`X. DISCRETIONARY FACTORS .................................................................. 20
`
`A.
`
`The Board Should Not Deny Institution Under Section 325(d) ......... 20
`
`B.
`
`C.
`
`The General Plastic Factors Weigh In Favor Of Institution .............. 21
`
`Institution Should Not Be Denied Under Fintiv ................................ 25
`
`1.
`
`2.
`
`3.
`
`A Final Written Decision Will Issue Before Any Trial............26
`
`The Merits of the Petition Support Institution .........................26
`
`Stipulation Not To Rely On The Petition’s Grounds In District
`Court .......................................................................................26
`
`XI. GROUND 1: THE COMBINATION OF OGAWA AND YOSHIOKA
`RENDERS OBVIOUS CLAIMS 1-2, 7, 10-11, AND 14. ........................... 27
`
`1. Motivation to Combine Ogawa with Yoshioka .......................27
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Claim 1 ...................................................................................30
`
`Claim 2: ..................................................................................46
`
`Claim 7: ..................................................................................49
`
`Claim 10: ................................................................................50
`
`Claim 11: ................................................................................53
`
`Claim 14: ................................................................................55
`
`XII. GROUND 2: THE COMBINATION OF YOSHIOKA, OGAWA, AND
`JANKOVIC RENDERS OBVIOUS CLAIMS 1-2, 7, 10-11, AND 14. ...... 57
`
`1. Motivation to Combine Yoshioka with Ogawa .......................57
`
`2. Motivation to Combine Yoshioka and Ogawa with Jankovic ..60
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claim 1 ...................................................................................64
`
`Claim 2: ..................................................................................81
`
`Claim 7: ..................................................................................84
`
`Claim 10: ................................................................................86
`
`ii
`
`

`

`
`
`7.
`
`8.
`
`Claim 11: ................................................................................88
`
`Claim 14: ................................................................................89
`
`XIII. SECONDARY CONSIDERATIONS DO NOT SUPPORT A FINDING OF
`NON-OBVIOUSNESS ............................................................................... 90
`
`XIV. MANDATORY DISCLOSURES ............................................................... 90
`
`A.
`
`Real Parties-in-Interest under 37 C.F.R. 42.8(b)(1) ........................... 90
`
`B.
`
`C.
`
`D.
`
`A.
`
`Related Matters under 37 C.F.R. 42.8(b)(2) ...................................... 90
`
`Lead and Back-Up Counsel under 37 C.F.R. 42.8(b)(3) .................... 91
`
`Service Information under 37 C.F.R. 42.8(b)(4)................................ 91
`
`Payment of Fees under 37 C.F.R. § 42.15(a) ..................................... 92
`
`XV. CONCLUSION .......................................................................................... 92
`
`
`
`iii
`
`

`

`
`
`LIST OF EXHIBITS
`
`Exhibit
`
`Description
`
`1001
`1002
`
`1003
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`
`1011
`
`U.S. Patent No. 6,557,540 to Mianzo et al (“the ’540 patent”)
`Prosecution File History of U.S. Patent No. 6,557,540 (“’540 file
`history”)
`Expert Declaration of Gerald J. Micklow, Ph.D., PE
`Curriculum Vitae of Gerald J. Micklow, Ph.D., PE
`US Pat. Pub. 2002/0029757 to Ogawa et al. (“Ogawa”)
`U.S. Patent No. 5,713,317 to Yoshioka (“Yoshioka”)
`“Torque Management of Engines with Variable Cam Timing,” M.
`Jankovic, F. Frischmuth, A. Stefanopoulou, and J. A. Cook, IEEE
`Control Systems, October 1998 (“Jankovic”)
`Expert Declaration of Sylvia D. Hall-Ellis, Ph.D.
`Curriculum Vitae of Sylvia D. Hall-Ellis, Ph.D.
`Jankovic MARC Record from the Linda Hall Library of Science,
`Engineering & Technology
`Jankovic MARC Record from the OCLC Bibliographic Database
`
`iv
`
`

`

`
`
`I.
`
`CLAIM LISTING
`
`A. Claim 1
`
`1[pre] A method for calculating a valve timing command for an engine of a
`vehicle, comprising:
`obtaining an engine performance command;
`receiving an environmental conditions signal;
`
`1[a]
`1[b]
`
`1[c]
`
`1[d]
`1[e]
`
`1[f]
`
`
`
`2
`
`7
`
`10
`
`determining a valve feedforward term based on the engine performance
`command and the environmental conditions signal;
`receiving an engine performance feedback;
`calculating a valve feedback term based on the engine performance
`command and the engine performance feedback; and
`calculating a valve timing command based on the valve feedforward
`term and the valve feedback term.
`
`B. Claim 2
`
`The method of claim 1 wherein said obtaining an engine performance
`command includes receiving a vehicle performance command from a
`driver of the vehicle and deriving the engine performance command
`based on the vehicle performance command.
`
`C. Claim 7
`
`The method of claim 1 wherein said receiving an engine performance
`feedback includes receiving engine speed data.
`
`D. Claim 10
`
`The method of claim 1 wherein said calculating a valve timing command
`includes calculating an EVO command, an EVC/IVO command, and an
`IVC command.
`
`E. Claim 11
`
`11
`
`The method of claim 1 further comprising receiving fuel conversion
`data.
`
`
`
`
`
`
`
`
`
`1
`
`

`

`
`
`F. Claim 14
`
`14
`
`
`
`
`The method of claim 1 further comprising receiving engine emissions
`data.
`
`
`
`2
`
`

`

`II.
`
`INTRODUCTION
`
`
`
`Mercedes-Benz USA, LLC (“MBUSA”) and BMW of North America, LLC
`
`(“BMW”) (collectively, “Petitioners”) petition for Inter Partes Review of claims 1-
`
`2, 7, 10-11, and 14 of U.S. Patent No. 6,557,540 to Mianzo et al. (“the ʼ540 patent”),
`
`titled “Method of calculating a valve timing command for an engine.”
`
`The ’540 patent claims nothing more than conventional methods for
`
`controlling engine valve timing. The ’540 patent relies on known measures of
`
`engine performance and operating conditions as inputs to its valve timing control,
`
`and does not purport to have invented a new method for gathering these inputs. Nor
`
`is the ’540 patent’s method for calculating its valve timing control new. The ’540
`
`patent uses the well-known techniques of feedforward and feedback control to
`
`determine valve timing. Thus, the ’540 patent claims nothing more than measuring
`
`engine performance and operating condition and using feedforward and feedback
`
`control to adjust valve timing.
`
`There is nothing inventive about this approach. The prior art includes a
`
`variety of references that calculate commands for controlling valve timing based on
`
`feedforward and feedback terms. For example, Ogawa, Yoshioka, and Jankovic all
`
`discloses calculating valve timing commands based on feedback and feedforward
`
`terms. Accordingly, Petitioner requests that the challenged claims be held
`
`unpatentable.
`
`3
`
`

`

`
`
`III. REQUIREMENTS UNDER 37 C.F.R. 42.104
`
`A. Grounds for Standing
`
`Petitioners respectfully requests inter partes review (“IPR”) of Claims 1-2, 7,
`
`10-11, and 14 (“Challenged Claims”) of the ’540 patent (Ex. 1001), which is
`
`indicated as assigned to Michigan Motor Technologies LLC (“MMT”). Petitioners
`
`certify that the ’540 patent is available for inter partes review and Petitioners are not
`
`barred or estopped from requesting review of the Challenged Claims on the grounds
`
`identified in this Petition.
`
`B.
`
`Precise Relief Requested
`
`The relief requested is cancellation of the challenged claims, as follows:
`
`’540 Patent
`Claims
`1-2, 7, 10-11,
`14
`1-2, 7, 10-11,
`14
`
`Ground
`
`1
`
`2
`
`
`
`References
`
`Ogawa, Yoshioka
`
`Yoshioka, Ogawa, Jankovic
`
`Basis
`
`§103
`
`§103
`
`IV. OVERVIEW OF THE ’540 PATENT
`
`The claims of the ’540 patent disclose methods for calculating commands to
`
`control the valve timing of the intake and exhaust valves of the combustion cylinders
`
`for internal combustion engines. Ex. 1001 at Abstract.
`
`Four-stroke gasoline engines generate power through four strokes or stages.
`
`Id. at 1:13-14. In the first stroke, an intake valve opens, and a piston moves down
`
`in the cylinder drawing air and fuel through the intake port and the intake valve into
`
`4
`
`

`

`the cylinder. Id. at 1:14-16.
`
`
`
`
`
`Pure Diesel Power, The Four-Stroke Cycle of An Automotive Engine (Sept. 23, 2023),
`
`https://puredieselpower.com/blog/four-stroke-cycle-automotive-engine.
`
`In the second stroke, the intake valve closes and the piston reverses direction
`
`and moves up in the cylinder to compress the air/fuel mixture. Ex. 1001 at 1:16-
`
`18.
`
`5
`
`

`

`
`
`
`
`Pure Diesel Power, The Four-Stroke Cycle of An Automotive Engine (Sept. 23, 2023),
`
`https://puredieselpower.com/blog/four-stroke-cycle-automotive-engine.
`
`In the third stroke, or power or working stroke, a spark combusts the mixture,
`
`which drives the piston down and powers the vehicle. Ex. 1001 at 1:18-20.
`
`6
`
`

`

`
`
`
`
`Pure Diesel Power, The Four-Stroke Cycle of An Automotive Engine (Sept. 23, 2023),
`
`https://puredieselpower.com/blog/four-stroke-cycle-automotive-engine.
`
`In the fourth stroke, an exhaust valve opens, and the piston reverses direction
`
`to push the combusted mixture through the exhaust valve and out of the cylinder.
`
`Ex. 1001 at 1:20-23.
`
`7
`
`

`

`
`
`
`
`Pure Diesel Power, The Four-Stroke Cycle of An Automotive Engine (Sept. 23, 2023),
`
`https://puredieselpower.com/blog/four-stroke-cycle-automotive-engine.
`
`Controlling the timing of the opening and closing of the intake and exhaust
`
`valves is significant because it can be used to optimize both the fuel efficiency and
`
`the power output of the engine. Ex. 1001 at 1:30-33.
`
`The ’540 patent claims nothing more than adjusting valve timing based on
`
`8
`
`

`

`
`
`engine performance and operating conditions. In particular, the ’540 patent claims
`
`obtaining an “engine performance command” indicating desired engine performance.
`
`The specification discloses that the claimed “engine performance command” may
`
`be, for example, desired engine torque. Id. at 2:16-19. The system also receives
`
`an “environmental conditions signal.” Id. at 2:23-26. The specification discloses
`
`that the “environmental conditions signal” may be, for example, ambient
`
`temperature. Id. at 2:23-33.
`
`The “engine performance command”
`
`(e.g., desired
`
`torque) and
`
`“environmental conditions signal” (e.g., ambient temperature) are used to determine
`
`a “valve feedforward term.” The specification provides no limitation on the format
`
`of the “valve feedforward term,” and instead only discloses that the “valve
`
`feedforward term” is used in part to compute a “valve timing command”:
`
`
`
`9
`
`

`

`Id. at FIG. 2 (annotated).
`
`
`
`As shown in the figure, the claimed system also calculates a “valve feedback
`
`term” using the “performance engine command” and an “engine performance
`
`feedback.”
`
` Id. at 2:66-3:7.
`
` The specification explains that the “engine
`
`performance feedback” may include data gathered by an engine sensor, such as
`
`engine speed. As shown in the figure below, the “valve feedback term” is used in
`
`conjunction with the “valve feedforward term” to calculate a “valve timing
`
`command”:
`
`
`
`Ex. 1001 at FIG. 2 (annotated).
`
`The patent does not place any restriction on how the “feedforward” and
`
`“feedback” terms may be used to compute a “valve timing command.”
`
`The specification discloses that a variety of “valve timing commands” may be
`
`10
`
`

`

`
`
`computed, including, for example, a command to open the exhaust valve (“EVO”),
`
`a command to close the exhaust valve (“EVC”), a command to open the intake valve
`
`(“IVO”), or a command to close the intake valve (“IVC”).
`
`V.
`
`PROSECUTION HISTORY
`
`The ’540 patent issued May 6, 2003, from U.S. Application No. 10/014,286
`
`(“the ’286 application”), which was filed on December 11, 2001. Ex. 1001.
`
`Thus, the ’540 patent’s earliest possible priority date is December 11, 2001.
`
`The examiner allowed all claims of the ’286 application without any
`
`rejections. See Ex. 1002. Prior art references Ogawa, Yoshioka, and Jankovic
`
`were not before the examiner during prosecution. Id.
`
`VI. THE HYUNDAI AND VOLKSWAGEN IPRS
`
`Hyundai Motor Company (“Hyundai”) and Volkswagen Group of America,
`
`Inc. (“VW”) each previously filed a petition for inter partes review of the ’540 patent.
`
`See IPR Nos. IPR2018-01061 and IPR2020-00160. The petition in IPR2018-
`
`01061 challenged claims 1-2, 7, 10-11, and 14 based on Yoshioka and Jankovic.
`
`See IPR No. IPR2018-01061 at Paper 2 (Petition). These references are also relied
`
`upon by MBUSA in this Petition. The petition in IPR2020-00160 challenged
`
`claims 1-16 based on Yoshioka, U.S. Patent No. 4,995,351 and U.S. Patent No.
`
`6,308,671. See IPR No. IPR2020-00160 at Paper 2 (Petition). Neither Hyundai
`
`nor VW’s petition relied on the Ogawa reference cited in this petition. See IPR No.
`
`IPR2018-01061 at Paper 2 (Petition); IPR No. IPR2020-00160 at Paper 2 (Petition).
`
`11
`
`

`

`
`
`In IPR2018-01061, Patent Owner settled its litigation with Hyundai and
`
`moved for termination of the IPR before the PTAB issued an institution decision.
`
`The PTAB granted the termination request.
`
`The PTAB denied institution of the IPR2020-00160 petition on the grounds
`
`that the petition did not show that Yoshioka taught the “obtaining an engine
`
`performance command” limitation recited in the ’540 patent’s claim 1. IPR No.
`
`IPR2020-00160, Paper 8 at 20.
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`
`A POSITA at the time of the alleged invention would have had a B.S. degree
`
`in Electrical Engineering or Mechanical Engineering (or equivalent), as well as at
`
`least 1-2 years of academic or industry experience in the design and analysis of
`
`internal combustion engines or, alternatively, at least an M.S. degree in Electrical
`
`Engineering or Mechanical Engineering. Ex. 1003 at ¶ 47.
`
`VIII. CLAIM CONSTRUCTION
`
`The PTAB construes challenged claims in an IPR “using the same claim
`
`construction standard that would be used to construe the claim in a civil action under
`
`35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Claim terms must be given their
`
`ordinary and customary meaning as understood by one of ordinary skill in the art at
`
`the time of the invention, in light of the specification and the prosecution history of
`
`the patent. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312-1313 (Fed. Cir. 2005)
`
`(en banc); see also 83 Fed. Reg. 51,340 (Oct. 11, 2018).
`
`12
`
`

`

`
`
`Petitioners provide the following claim constructions. All claim terms not
`
`identified below should receive their plain and ordinary meaning, in the context of
`
`the ’540 patent specification, under the Phillips standard. Petitioners take no
`
`position in this Petition as to whether the claims are indefinite, and no statements
`
`herein should be interpreted to mean that the terms are definite.
`
`A. Claims 1, 2, 6, and 8: “engine performance command”
`
`Claims 1, 2, 6, and 8 recite an “engine performance command.” The ’540
`
`patent teaches that an engine performance command “is preferably a desired engine
`
`torque” but that it “may alternatively be another suitable variable, such as a desired
`
`engine acceleration.” Ex. 1001 at 2:16-22.
`
`Accordingly, a POSITA would understand “engine performance command”
`
`in view of the claims and the specification to mean a “command that defines a
`
`desired engine torque, or other desired measure of engine performance, such as
`
`engine speed or engine acceleration.”1 Ex. 1003 at ¶¶ 62-63.
`
`Notably, the Grounds in this petition do not turn on this construction. Indeed,
`
`the prior art expressly discloses an “engine performance command” in the form a
`
`
`1 The PTAB previously construed “engine performance command” as a
`
`“command that defines a desired engine torque or other measure of engine
`
`performance, such as engine speed or engine acceleration.” Volkswagen Group of
`
`America, Inc. v. Michigan Motor Technologies LLC, IPR2020-00160, Paper 9 at 12
`
`(PTAB June 5, 2020).
`
`13
`
`

`

`desired engine torque, which the specification expressly states is one type of “engine
`
`
`
`performance command.”
`
`IX. SUMMARY OF PRIOR ART
`
`A. Ogawa
`
`U.S. Patent Application Publication 2002/0029757 by Ogawa et al., “Valve
`
`timing controller, valve timing control method and engine control unit for internal
`
`combustion engine” (Ex. 1005, “Ogawa”), was filed on September 14, 2001, before
`
`the ’540 patent’s earliest possible priority date. Therefore, Ogawa is prior art at
`
`least under 35 U.S.C. § 102(e) (pre-AIA).
`
`Like the ’540 patent, Ogawa discloses “a valve timing control method” that
`
`includes receiving data regarding a desired engine performance (required engine
`
`torque), the engine’s environmental operating conditions (atmospheric pressure),
`
`and engine performance (engine rotational speed). Id. at ¶¶ 0002, 0072, 0070, 0010.
`
`Ogawa also teaches calculating both a valve feedforward and a valve feedback
`
`term. Ogawa teaches using its inputs to calculate the phase of a camshaft (“cam”)
`
`that controls the time at which either an intake or exhaust valve opens and closes.
`
`Id. at ¶ 0002. To control the cam phase, Ogawa teaches calculating a basic value
`
`target cam phase VTCCMDMAP, i.e., a valve feedforward term, based on the
`
`desired engine torque PMCMD. Id. at ¶ 0084.
`
`14
`
`

`

`
`
`
`
`Id. at FIG. 3 (annotated).
`
`Just like the ’540 patent, Ogawa teaches calculating a valve feedback term by
`
`comparing an input to an output. Ogawa teaches comparing an adjusted target
`
`valve cam phase VTCCMD to an actual valve cam phase VTCACT to calculate a
`
`difference amount DVTC, i.e., a valve feedback term.
`
` Id. at ¶ 0090.
`
`15
`
`

`

`
`
`
`
`Id. at FIG. 4.
`
`Finally, Ogawa teaches calculating a valve timing command DbVTC based
`
`on its valve feedforward term VTCCMDMAP and valve feedback term DVTC.
`
`Ogawa teaches calculating DbVTC, which determine the duty ratio of the driving
`
`16
`
`

`

`
`
`signal that controls the valve cam shaft phase and, thus, the timing of the opening
`
`and closing of the valve. Id. at ¶¶ 0059, 0060, 0082. Like the ’540 patent,
`
`Ogawa’s valve timing command DbVTC is calculated based on its valve
`
`feedforward term VTCCMDMAP and valve feedback term DVTC. DVTC is
`
`calculated based on the valve feedforward term VTCCMDMAP, and DbVTC is
`
`calculated based on DVTC. Id. at (1), ¶ 0091, FIG. 4.
`
`B. Yoshioka
`
`U.S. Patent No. 5,713,317 to Yoshioka, “Method of and apparatus for
`
`continuously and variably controlling valve timing of internal combustion engine”
`
`(Ex. 1006, “Yoshioka”), issued on February 3, 1998, more than three years before
`
`the earliest effective priority date of the ’540 patent. Therefore, Yoshioka is prior
`
`art at least under 35 U.S.C. § 102(b) (pre-AIA).
`
`Like the ’540 patent, Yoshioka teaches a method that “controls a continuously
`
`variable valve timing mechanisms of an internal combustion engine to continuously
`
`and variably control the timing of an intake valve.” Ex. 1006 at Abstract. Also
`
`like the ’540 patent, Yoshioka teaches receiving data regarding atmospheric pressure,
`
`i.e., the environmental conditions the engine is operating in, and engine speed, i.e.,
`
`engine performance. Id. at Ex. 1006 at 4:42-5:46, 7:24-25 .
`
`Yoshioka further teaches calculating both a valve feedforward and a valve
`
`feedback term, just like the ’540 patent. Yoshioka teaches calculating a target
`
`timing displacement IVTDt, i.e., a valve feedforward term, to control the valve
`
`17
`
`

`

`
`
`opening and closing based on atmospheric pressure PA, engine load GN, and engine
`
`revolution speed NE. Ex. 1006 at 7:57-67.
`
`
`
`Id. at FIG. 9 (annotated).
`
`Like the ’540 patent, Yoshioka teaches calculating a valve feedback term by
`
`comparing an input to an output. Yoshika teaches calculating a target displacement
`
`IVTDt, and then using “feedback-control,” i.e., calculating a valve feedback term,
`
`“[t]o bring the displacement of the intake valve 23 to the target displacement IVTDt.”
`
`Id. at 8:5-7.
`
`Finally, just like the ’540 patent, Yoshioka teaches using its valve feedforward
`
`and feedback term to calculate a valve timing command. Yoshioka teaches using
`
`18
`
`

`

`
`
`its valve feedforward term IVTDt and feedback control, i.e., a valve feedback term,
`
`to calculate control signals for a hydraulic control valve to bring the actual intake
`
`valve displacement to the target displacement. Ex. 1006 at 8:5-7.
`
`C.
`
`Jankovic
`
`“Torque Management of Engines with Variable Cam Timing,” M. Jankovic,
`
`F. Frischmuth, A. Stefanopoulou, and J. A. Cook, IEEE Control Systems, October
`
`1998 (Ex. 1007, “Jankovic”), was published in October 19, 1998, more than one year
`
`before the earliest effective priority date of the ’540 patent. See Ex. 1008 at ¶¶ 37-
`
`42. Therefore, Jankovic is prior art under at least 35 U.S.C. § 102(b) (pre-AIA).
`
`Just like the ’540 patent, Jankovic teaches using feedforward and feedback
`
`terms to calculate a valve timing command. Jankovic discuses a “variable cam
`
`timing (VCT) system” for controlling valve timing. Ex. 1007 at 34. Jankovic
`
`teaches calculating a cam phasing command that controls a valve cam shaft phase,
`
`i.e., a valve timing command, in a “feedback loop” based on a valve feedback term
`
`cam position ζcam and a valve feedforward term, the previously calculated ζref . Ex.
`
`1007 at 36, 40, 41.
`
`
`
`19
`
`

`

`
`
`Id. at FIG. 8 (annotated).
`
`X. DISCRETIONARY FACTORS
`
`As discussed in detail below, the Board should not exercise its discretion to
`
`deny this IPR petition.
`
`A. The Board Should Not Deny Institution Under Section 325(d)
`
`The Board uses a two-part framework to analyze denial under § 325(d).
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-
`
`01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential). For prong one, the Board
`
`considers whether the same or substantially the same prior art or arguments were
`
`presented during the prosecution of the patent or any post-issuance proceedings. Id.
`
`at 7-8. For prong two, the Board considers whether the office materially erred in
`
`determining patentability of the challenged claims. Id. at n. 9. If the first prong
`
`is not met, the Board does not need to address the second prong. Godbersen-Smith
`
`Constr. Co. v. Guntert & Zimmerman Const. Div., Inc., IPR2021-00050, Paper 24 at
`
`21 (PTAB May 7, 2021). Here, the Advanced Bionics analysis weighs in favor of
`
`institution.
`
`An analysis of the ’540 patent prosecution history and Hyundai and VW’s
`
`prior IPR petitions favors institution. First, this Petition relies on art not considered
`
`during prosecution of the ’540 patent—Ogawa, Yoshioka, and Jankovic were not
`
`cited by the examiner or the applicant. See Ex. 1002.
`
`Second, this Petition relies on combinations of prior art not cited in any post-
`
`20
`
`

`

`
`
`issuance proceeding of the ’540 patent. In particular, this petition relies on the
`
`Ogawa reference in combination with Yoshioka and Jankovic. Neither Hyundai
`
`nor VW relied on Ogawa in their petitions. See IPR No. IPR2018-01061 at Paper
`
`2 (Petition); IPR No. IPR2020-00160 at Paper 2 (Petition). Accordingly, § 325(d)
`
`concerns are not implicated here because this Petition addresses new arguments
`
`based on prior art not addressed during prosecution or any post-issuance proceeding.
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, Paper 6 at
`
`7 (PTAB Feb. 13, 2020) (considering whether the same or substantially the same art
`
`previously was presented to the Office or whether the same or substantially the same
`
`arguments previously were presented to the Office.); Becton, Dickinson & Co. v. B.
`
`Braun Melsungen AG, IPR2017-01586, Paper 8 at 28 (PTAB Dec. 15, 2017)
`
`(informative) (finding that a cited reference was cumulative when the same base
`
`reference was substantively evaluated during prosecution).
`
`As such § 325(d) does not counsel in favor of a discretionary denial.
`
`Therefore, the Board does not have to address the second prong of the analysis.
`
`B.
`
`The General Plastic Factors Weigh In Favor Of Institution
`
`Factor 1: whether the same petitioner previously filed a petition directed
`
`to the same claims of the same patent. Neither VW nor Hyundai’s prior IPR bear
`
`a “significant relationship” such that Factor 1 would favor discretionary denial.
`
`Twitter v. Palo Alto Research Center Inc., IPR2021-01398, Paper 12 at 40-41
`
`(PTAB Mar. 15, 2022). MBUSA and BMW were sued separately from Hyundai
`
`21
`
`

`

`
`
`and VW: MMT sued Hyundai in the Eastern District of Michigan in 2017; MMT
`
`sued VW in the Eastern District of Michigan two years later in 2019; and MMT sued
`
`MBUSA ad BMW in the Northern District of Illinois three years later in 2022. See
`
`Michigan Motor Technologies LLC v. Hyundai Motor Company, No. 2:17-cv12901
`
`(E.D. Mich.); Michigan Motor Technologies LLC v. Volkswagen AG, No. 2:19-
`
`cv10485 (E.D. Mich.); Michigan Motor Technologies, LLC v. Mercedes-Benz USA,
`
`LLC, Case 1:22-cv-03957 (N.D. Ill.); Michigan Motor Technologies, LLC v.
`
`Bayerische Motoren Werke AG et al, Case 1:22-cv-03804 (N.D. Ill.). Accordingly,
`
`there is no relationship between the IPRs, let alone a significant one.
`
`Moreover, there is no overlap between MBUSA or BMW’s accused products
`
`and the accused products that were at issue in the litigation with Hyundai or VW.
`
`MMT’s complaint against MBUSA accuses three Mercedes-AMG engines and the
`
`Mercedes-Benz GLC 350e of infringement. Michigan Motor Technologies, LLC v.
`
`Mercedes-Benz USA, LLC, Case 1:22-cv-03957 (N.D. Ill.), Dkt. 1 at ¶¶ 13-17.
`
`MMT’s complaint against Hyundai accused multiple Hyundai vehicles of
`
`infringement. Michigan Motor Technologies LLC v. Hyundai Motor Company, No.
`
`2:17-cv12901 (E.D. Mich.), Dkt. 1 at ¶13, 181. MMT’s complaint against BMW
`
`accuses two BMW engines and four series of BMW vehicles of infringement.
`
`Michigan Motor Technologies, LLC v. Bayerische Motoren Werke AG et al, Case
`
`1:22-cv-03804 (N.D. Ill.), Dkt. 1 at ¶¶ 14-17. MMT’s complaint against VW
`
`accused multiple VW and Audi engines and vehicles of infringement. Michigan
`
`22
`
`

`

`
`
`Motor Technologies LLC v. Volkswagen AG, No. 2:19-cv10485 (E.D. Mich.), Dkt.
`
`1.
`
`Furthermore, neither MBUSA or BMW coordinated with Hyundai or VW in
`
`the preparation of this Petition, Hyundai’s petition in IPR2018-01061, or VW’s
`
`petition in IPR2020-00160. In these circumstances, the Board has found Factor 1
`
`weighs in favor of institution. IPR2021-01398, Paper 12 at 40-41.
`
`Factor 2: whether at the time of filing of the first petition the petitioner
`
`knew of the prior art asserted in the second petition or should have known of it.
`
`This factor does not apply because neither MBUSA nor BMW previously filed a
`
`petition. Moreover, as explained with regard to Factor 1 above, neither MBUSA
`
`nor BMW had reason to know of the prior art asserted in this Petition at the time of
`
`Volkswagen’s petition at least because MMT had not yet sued MBUSA or BMW.
`
`Likewise, there is no significant relationship between MBUSA or BMW and
`
`Hyundai or Volkswagen. Thus, Factor 2 weighs in favor of institution. IPR2021-
`
`01398, Paper 12 at 41-42.
`
`Factor 3: whether at the time of filing of the second petition the petitioner
`
`already received the patent owner’s preliminary response to the first petition or
`
`received the Board’s decision on whether to institute review in the first petition.
`
`This factor does not apply because neither MBUSA nor BMW previously filed a
`
`petition. Likewise, there was no delay by Petitioners in filing its IPR petition after
`
`being sued by MMT. Accordingly, Factor 3 weighs in favor of institution.
`
`23
`
`

`

`
`
`Factor 4: the length of time that elapsed between the time the petitioner
`
`learned of the prior art asserted in the second petition and the filing of the second
`
`petition. This factor does not apply because neither MBUSA nor BMW previously
`
`filed a petition. Further, MBUSA and BMW did not learn of the prior art asserted
`
`in this Petition until after MBUSA and BMW received service of MMT’s complaints
`
`in the respective district court litigations. This IPR petition is timely filed before
`
`both MBUSA and BMW’s statutory bar date and, thus, there is also no delay.
`
`Accordingly, Factor 4 also weighs in favor of institution.
`
`Factor 5: whether the petitioner provides adequate explanation for the
`
`time elapsed between the filings of multiple petitions directed to the same claims
`
`of the same patent. For the same reasons discussed with respect to Factor 4, Factor
`
`5 is also irrelevant. Accordingly, Factor 5 weighs in favor of institution.
`
`Factor 6: the finite resources of the Board. The petition is not a “follow-
`
`on” petition like those discussed in General Plastic or a “serial attack” on the ’540
`
`patent by the same petitioner. Moreover, Petitioners are not attempting to
`
`“strategically stage their prior art and arguments in multiple petitions”—this Petition
`
`was filed as a direct response to MMT’s new complaints against Petitioners filed
`
`more than two years after VW’s petition of the ’540 patent and more than four years
`
`after Hyundai’s petition, both of which were filed in response to MMT’s complaints
`
`against Hyundai and VW, respectively. Ameristar Perimeter Sec. Usa, Inc. v. Rsa
`
`Protective Techs., LLC, No. IPR2020-01369, Paper 11 at 15 (PTAB Feb. 5, 2021)
`
`24
`
`

`

`
`
`(finding General Plastics factors weighed in favor of institution where petitioner
`
`was not involved in prior petitions, was not attempting to strategically stage prior
`
`ar