Trials@uspto.gov
`571-272-7822
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`Paper 11
`Date: February 24, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`IPR2019-01400
`Patent 8,069,839 B2
`____________
`
`
`
`Before KEN B. BARRETT, LYNNE H. BROWNE, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 11
`Date: February 24, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`IPR2019-01400
`Patent 8,069,839 B2
`____________
`
`
`
`Before KEN B. BARRETT, LYNNE H. BROWNE, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2019-01400
`Patent 8,069,839 B2
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background and Summary
`
`
`
`Ford Motor Company (“Petitioner”)1 filed a Petition requesting inter
`
`partes review of U.S. Patent No. 8,069,839 B2 (“the ’839 patent,”
`
`Ex. 1001). Paper 2 (“Pet.”). The Petition challenges the patentability of
`
`claims 1–8 of the ’839 patent. Massachusetts Institute of Technology
`
`(“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 7
`
`(“Prelim. Resp.”).
`
`
`
`An inter partes review may not be instituted “unless . . . the
`
`information presented in the petition . . . shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered
`
`the arguments and evidence presented by Petitioner and Patent Owner, we
`
`determine that Petitioner has not demonstrated a reasonable likelihood of
`
`prevailing in showing that at least one of the challenged claims of the ’839
`
`patent is unpatentable. We do not institute an inter partes review and the
`
`Petition is denied.
`
`B.
`
`Related Proceedings
`
`
`
`One or both parties identify, as matters involving or related to the
`
`’839 patent, Ethanol Boosting Systems, LLC v. Ford Motor Company, Civil
`
`Action No. 1:19-cv-00196-CFC-SRF (D. Del.), and Patent Trial and Appeal
`
`Board case IPR2020-00010. Pet. 55; Paper 8, 2–6. The parties also identify,
`
`
`
`1 Petitioner identifies Ford Motor Company as the real party-in-interest.
`Pet. 55.
`2 Patent Owner identifies “Massachusetts Institute of Technology, the
`Patent Owner, and Ethanol Boosting Systems, LLC, the Exclusive
`Licensee,” as real parties-in-interest. Paper 8, 2.
`
`2
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`IPR2019-01400
`Patent 8,069,839 B2
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`as involving challenges to related patents, IPR2019-01399 and IPR2020-
`
`00010 (US 9,810,166), IPR2020-00013 (US 8,069,839), IPR2019-01401
`
`and IPR2020-00011 (US 9,255,519), and IPR2019-01402 and IPR2020-
`
`00012 (US 10,138,826). Pet. 55; Paper 6, 2–3.
`
`C.
`
`The ’839 Patent
`
`
`
`The ’839 patent, titled “Fuel Management System for Variable
`
`Ethanol Octane Enhancement of Gasoline Engines,” issued December 6,
`
`2011, from an application filed May 27, 2011, and ultimately claims priority
`
`to an application filed November 18, 2004. Ex. 1001, codes (54), (45), (22),
`
`(63). The ’839 patent is directed “to spark ignition gasoline engines utilizing
`
`an antiknock agent which is a liquid fuel with a higher octane number than
`
`gasoline such as ethanol to improve engine efficiency.” Id. at 1:14–17.
`
`Figure 1 of the ’839 patent is reproduced below.
`
`
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`3
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`IPR2019-01400
`Patent 8,069,839 B2
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`Figure 1 depicts “a block diagram of one embodiment of the invention
`
`disclosed” in the ’839 patent. Id. at 2:44–45. Spark ignition gasoline
`
`engine 10 includes knock sensor 12, fuel management microprocessor
`
`system 14, engine manifold 20, and turbocharger 22. Id. at 2:61–3:2.
`
`Ethanol tank 16 contains an anti-knock agent, such as ethanol, and gasoline
`
`tank 18 contains the primary fuel, such as gasoline. Id. at 2:63–3:1. Fuel
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`management microprocessor system 14 controls the direct injection of the
`
`anti-knock agent into engine 10 and the injection of gasoline into engine
`
`manifold 20. Id. “The amount of ethanol injection is dictated either by a
`
`predetermined correlation between octane number enhancement and fraction
`
`of fuel that is provided by ethanol in an open loop system or by a closed
`
`loop control system that uses a signal from the knock sensor 12 as an input
`
`to the fuel management microprocessor 14.” Id. at 3:2–8. The fuel
`
`management system minimizes the amount of ethanol directly injected into
`
`the cylinder while still preventing engine knock. Id. at 3:8–10.
`
`
`
`“Direct injection substantially increases the benefits of ethanol
`
`addition and decreases the required amount of ethanol. . . . Because ethanol
`
`has a high heat of vaporization there will be substantial cooling when it is
`
`directly injected into the engine 10,” which “further increases knock
`
`resistance.” Id. at 3:13–21. The amount of octane enhancement needed
`
`from the ethanol to prevent knocking is a function of the torque level. Id.
`
`at 5:42–53. In the embodiment of Figure 1, “port fuel injection of the
`
`gasoline in which the gasoline is injected into the manifold rather than
`
`directly injected into the cylinder is preferred because it is advantageous in
`
`obtaining good air/fuel mixing and combustion stability that are difficult to
`
`obtain with direct injection.” Id. at 3:22–27.
`
`4
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`IPR2019-01400
`Patent 8,069,839 B2
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`D.
`
`Illustrative Claims
`
`
`
`Of the challenged claims of the ’839 patent, claim 1 is the sole
`
`independent claim. The remaining challenged claims depend directly or
`
`indirectly from independent claim 1. Independent claim 1, reproduced
`
`below, is illustrative.
`
`1. A spark ignition engine that is fueled both by direct
`injection and by port injection wherein above a selected torque
`value the ratio of fuel that is directly injected to fuel that is port
`injected increases; and wherein the engine is operated at a
`substantially stoichiometric fuel/air ratio.
`
`Ex. 1001, 7:7–11.
`
`
`
`Petitioner relies on the following references:
`
`E.
`
`Evidence
`
`Reference
`
`Dates
`
`Exhibit No.
`
`Kobayashi US 7,188,607 B2
`
`Filed June 27, 2003;
`Issued March 13, 2007
`
`Rubbert
`
`DE 198 53 799 A1 Filed Nov. 21, 1998;
`Published May 25, 2000
`
`Kinjiro
`
`JP 2002-227697
`
`Takehiko
`
`JP S63-230920
`
`Filed Jan. 31, 2001;
`Published Aug. 14, 2002
`
`Filed March 19, 1987;
`Published Sept. 27, 1988
`
`1005
`
`1007
`
`1008
`
`1029
`
`Bosch Automotive Handbook (Robert Bosch GmbH, 3rd ed.
`1993) (“Bosch”)
`
`1031
`
`
`
`Petitioner also relies on the Declaration of Dr. Nigel N. Clark
`
`(Ex. 1003) in support of its arguments. The parties rely on other exhibits as
`
`discussed below.
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`5
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`IPR2019-01400
`Patent 8,069,839 B2
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`F.
`
`Asserted Grounds of Unpatentability
`
`
`
`Petitioner asserts that the challenged claims are unpatentable on the
`
`following grounds:
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`1, 2, 5–8
`
`3, 4
`
`1–4, 6, 7
`
`5
`
`1–5, 8
`
`102(b)
`
`Takehiko
`
`103
`
`Takehiko, Kobayashi
`
`102(b)
`
`Kinjiro
`
`103
`
`103
`
`Kinjiro, Kobayashi
`
`Rubbert, Bosch
`
`II. ANALYSIS
`
`A. Principles of Law
`
`
`
`Petitioner bears the burden of persuasion to prove unpatentability of
`
`the claims challenged in the Petition, and that burden never shifts to Patent
`
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`
`1378 (Fed. Cir. 2015).
`
`
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
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`Patent 8,069,839 B2
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`(3) the level of skill in the art; and (4) any objective evidence of
`
`non-obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B.
`
`The Level of Ordinary Skill in the Art
`
`
`
`Petitioner’s declarant, Dr. Clark, opines that:
`
`the person of ordinary skill in the field of the ’839 Patent would
`be expected to have at least a bachelor’s degree in engineering
`and at least five years of experience in the field of internal
`combustion engine design and controls. Individuals with
`different education and additional experience could still be of
`ordinary skill in the art if that additional experience
`compensates for a deficit in their education and experience
`stated above.
`
`Ex. 1003 ¶ 10; see Pet. 11.
`
`
`
`Patent Owner does not dispute this characterization of the level of
`
`ordinary skill in the art nor provide its own definition. For the purposes of
`
`this Decision, we accept Dr. Clark’s characterization of the level of ordinary
`
`skill in the art, which we find to be consistent with the level of skill reflected
`
`in the ’839 patent and the prior art of record.
`
`C.
`
`Claim Construction
`
`
`
`In an inter partes review requested in a petition filed on or after
`
`November 13, 2018, we apply the same claim construction standard used in
`
`district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2019)).
`
`
`
`In applying that standard, claim terms generally are given their
`
`ordinary and customary meaning as would have been understood by a person
`
`of ordinary skill in the art at the time of the invention and in the context of
`
`
`
`3 The parties have not directed our attention to any objective evidence of
`non-obviousness.
`
`7
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`IPR2019-01400
`Patent 8,069,839 B2
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`the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining
`
`the meaning of the disputed claim limitation, we look principally to the
`
`intrinsic evidence of record, examining the claim language itself, the written
`
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`
`(citing Phillips, 415 F.3d at 1312–17).
`
`1. “That is Fueled Both by Direct Injection and by Port Injection”
`in the “Preamble”
`
`
`
`The initial recitation of independent claim 1 provides “[a] spark
`
`ignition engine that is fueled both by direct injection and by port injection.”
`
`Ex. 1001, 7:7–8.4 Petitioner argues that “[i]t is well-understood that the
`
`preamble of a claim is generally not limiting.” Pet. 13–14 (citations
`
`omitted). Petitioner continues:
`
`Here, “that is fueled both by direct injection and port injection”
`clearly modifies “a spark ignition engine.[”] Accordingly, “that
`is fueled both by direct injection and port injection” is
`effectively part of the preamble and not limiting.
`
`Id. at 14.
`
`
`
`As will be evident from our analysis below, we need not determine if
`
`the subject phrase regarding direct injection and port injection is limiting to
`
`resolve the parties’ dispute at this stage of the proceeding. See Nidec Motor
`
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`
`Cir. 2017).
`
`
`
`4 Petitioner remarks that claim 1 “and other claims” do not include a
`transitional phrase to mark the end of the preamble and identifies the phrase
`“[a] spark ignition engine that is fueled both by direct injection and by port
`injection fuel” as the preamble of claim 1. Pet. 13–14 (labeling the phrase as
`element “1.Pre” and prefacing a contention with “[t]o the extent that the
`preamble of Claim 1 is limiting . . . .”).
`
`8
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`Patent 8,069,839 B2
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`2. Selected Torque Value
`
`
`
`Independent claim 1 recites “wherein above a selected torque value
`
`the ratio of fuel that is directly injected to fuel that is port injected
`
`increases.” Ex. 1001, 7:8–10. Dependent claims 7 and 8 recite “some value
`
`of torque.” Id. at 7:28, 32.
`
`
`
`Petitioner addresses the construction of the claim phrase “selected
`
`torque value.” Pet. 5–6. Petitioner first asserts that the “‘selected torque
`
`value’ terms . . . are undefined[]” and “‘[s]elected torque value’ never
`
`appears in the ’839 Patent specification.” Pet. 5 (footnote omitted) (citing
`
`Ex. 1003 ¶ 93). These assertions coupled with Petitioner’s statement that
`
`“Petitioner reserves the right to assert 35 U.S.C. §112 challenges in the
`
`co-pending litigation,” id. at 5 n.5, suggests that Petitioner contends that the
`
`claims are indefinite. As Petitioner implicitly acknowledges, see Pet. 5–6,
`
`indefiniteness is not a ground for which a petitioner for inter partes review
`
`may request cancelation of a claim. See 35 U.S.C. § 311(b) (“A petitioner in
`
`an inter partes review may request to cancel as unpatentable 1 or more
`
`claims of a patent only on a ground that could be raised under section 102 or
`
`103 and only on the basis of prior art consisting of patents or printed
`
`publications.”). We do not reach the implied assertion of indefiniteness.
`
`
`
`Petitioner further asserts “that ‘selected torque value’ should be
`
`construed to equate to ‘selected load value’ and mean ‘a specified value of
`
`torque on a torque-speed map’ consistent with the ordinary and customary
`
`meaning of the term.” Pet. 6 (citing Ex. 1036, 2, 4; Ex. 1003 ¶¶ 94–95).
`
`
`
`As will be evident from our analysis below, we need not determine
`
`whether Petitioner’s proposed construction is correct in order to resolve the
`
`parties’ dispute.
`
`9
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`IPR2019-01400
`Patent 8,069,839 B2
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`
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`On this record and for purposes of this decision, we determine that no
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`claim terms require express construction.
`
`3. The District Court’s Constructions
`
`
`
`In the related litigation, the District Court conducted a claim
`
`construction hearing on January 8, 2020. Ex. 1040, 1. The District Court
`
`issued a Claim Construction Order in which the Court construed certain
`
`terms disputed in that litigation. The Court’s reasoning is set forth in the
`
`transcript of the claim construction hearing. Ex. 1040. In the Order, the
`
`Court also identified and adopted the litigants’ agreed-upon constructions of
`
`certain terms. Ex. 1041.
`
`
`
`That claim construction hearing occurred after the submissions in this
`
`case of the Petition and Patent Owner’s Preliminary Response. Very
`
`recently, the parties filed, with our authorization, the District Court’s Claim
`
`Construction Order and the accompanying transcript of the claim
`
`construction hearing.
`
`
`
`The claim construction rule for inter partes reviews provides that
`
`“[a]ny prior claim construction determination concerning a term of the claim
`
`in a civil action . . . that is timely made of record in the inter partes review
`
`proceeding will be considered.” 37 C.F.R. § 42.100(b).
`
`
`
`In reaching a decision as to whether to institute an inter partes review
`
`here, we have reviewed and considered the District Court’s constructions.5
`
`As mentioned, on this record and for purposes of this decision, we determine
`
`that no claim terms require express construction.
`
`
`
`5 In its Claim Construction Order, the District Court assigned to the phrase
`“above a selected torque value the ratio of fuel that is directly injected to
`fuel that is port injected increases” its plain and ordinary meaning.
`Ex. 1041, 2.
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`10
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`IPR2019-01400
`Patent 8,069,839 B2
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`D.
`
`The Alleged Anticipation of Claims 1, 2, and 5–8 by Takehiko
`(Ground 1)
`
`
`
`Petitioner alleges that independent claim 1 and its dependent claims 2
`
`and 5–8 are anticipated by Takehiko. Pet. 13–22. Patent Owner argues that
`
`Petitioner has failed to show that the Takehiko discloses the recitation of
`
`independent claim 1 concerning an increase in the ratio of directly injected
`
`fuel to port injected fuel above a selected torque value. See Prelim.
`
`Resp. 14.
`
`1. Takehiko (Ex. 1029)
`
`
`
`Takehiko pertains to “in-cylinder gasoline injection engines which
`
`supply gasoline by direct injection into the cylinders of an internal
`
`combustion engine.” Ex. 1029, 1. Petitioner’s annotated version of
`
`Takehiko’s Figure 1 is reproduced below.
`
`
`
`Pet. 15. Takehiko’s Figure 1 depicts “a cross-sectional configuration
`
`diagram of the main part of the in-cylinder gasoline injection engine of
`
`[Takehiko’s] invention.” Ex. 1029, 2. Petitioner’s annotations identify
`
`relevant parts of the engine. Engine 1 includes spark plug 23 and two fuel
`
`injectors, 21 and 22. Id. at 3. Sub-injector (“macrojector”) 21 is mounted in
`
`11
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`IPR2019-01400
`Patent 8,069,839 B2
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`intake air passage 16a near intake port 16. Id. at 3. Main injector 22 is
`
`mounted so that the nozzle tip is facing combustion chamber 13 and is
`
`directed towards exhaust valve 15. Id. at 3, 4. Petitioner’s annotations label
`
`sub-injector 21 as “PI” (port injection) and main injector 22 as “DI” (direct
`
`injection). “Fuel is supplied from a fuel pump, not shown in the figure, to
`
`main injector 22 and sub-injector 21.” Id. at 3.
`
`
`
`Objectives of Takahiko include “avoiding knocking even when
`
`gasoline is directly injected into the cylinder” and “improve[ing] exhaust gas
`
`characteristics, fuel economy and the like.” Id. at 2. Takahiko addresses
`
`these objectives by positioning a fuel injection valve (main injector 22) “in a
`
`location in opposition to said exhaust valve which injection valve directly
`
`injects gasoline toward said exhaust valve.” Id. This, in part, utilizes the
`
`fuel’s latent heat of vaporization to cool the combustion gas (injected fuel
`
`and air) at the exhaust valve. Id.
`
`
`
`As mentioned, sub-injector 21, is located in intake air passage 16a and
`
`is designated by Petitioner as the port injection valve. Sub-injector 21, “at
`
`times of idling or low-load operation[,] supplies injected fuel to engine 1,
`
`and in terms of injection volume, a smaller device smaller than main
`
`injector 22 is used.” Id. at 3. Takahiko explains:
`
`The amount of fuel supplied to engine 1 from main
`
`injector 22 is limited by the amount that can be supplied by
`injection by main injector 22 [direct injection] during the fuel
`injection period shown in Figure 3. If the amount of fuel
`supplied by main injector 22 alone is insufficient, the lacking
`amount can be made up by supplying by injection to engine 1
`from sub-injector 21 [port injection]. Furthermore, at times of
`low-load driving, such as when idling, it is acceptable to supply
`injected fuel into intake port 16 from sub-injector 21 [port
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`12
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`injection] without supplying injection from main injector 22
`[direct injection].
`
`Id. at 4.
`
`2. Petitioner’s Anticipation Challenge Based on Takehiko
`
`
`
`Claim 1, the sole challenged independent claim, recites “above a
`
`selected torque value the ratio of fuel that is directly injected to fuel that is
`
`port injected increases.” Ex. 1001, 7:8–10. Petitioner contends that
`
`Takehiko inherently discloses this feature. Pet. 15–17. As Petitioner
`
`recognizes, anticipation by inherency requires that the missing aspect of the
`
`claim be necessarily present in the prior art reference. Id. at 16 (quoting
`
`Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
`
`1991)).
`
`
`
`Petitioner’s inherency theory is based on a series of assertions. The
`
`foundation of the theory is the assertion that a person of ordinary skill in the
`
`art “would understand that Takehiko implicitly teaches the use of open loop
`
`control to manage its engine operation, as Takehiko necessarily has a load or
`
`torque value whereby its engine begins to rely on DI to prevent knock.” Id.
`
`at 16 (citing Ex. 1003 ¶ 110). Petitioner reasons that an open loop system
`
`must be used because “Takehiko is silent on the use of knock detectors” (a
`
`closed loop system) and because Takehiko allegedly discloses preventing
`
`knock by using PI alone at low loads and DI alone or in combination with PI
`
`at high loads. Id. (citing Ex. 1029, 4; Ex. 1003 ¶ 110). Petitioner builds on
`
`these assertions in further asserting that, “[i]n doing so, the engine of
`
`Takehiko is necessarily programmed to switch from PI only to DI at a
`
`predetermined (i.e., selected) threshold computed from variables including
`
`load value.” Id. (emphasis added) (citing Ex. 1003 ¶ 110). Then, building
`
`even further on those assertions, Petitioner asserts that, “[a]s a result of its
`
`13
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`Patent 8,069,839 B2
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`programming and above the predetermined threshold, which is dependent
`
`upon load value, the ratio of DI to PI fuel increases from zero DI fuel to a
`
`positive value of DI fuel depending on whether PI is used in conjunction
`
`with DI.” Id. at 16–17 (citing Ex. 1003 ¶ 110).
`
`
`
`Patent Owner argues that Petitioner has failed to make the requisite
`
`showing for its inherency argument and, specifically, that “Petitioner fails to
`
`even establish the premise for its inherency argument: that open loop
`
`control is necessarily present in Takehiko.” Prelim. Resp. 14–15. We agree.
`
`
`
`As Patent Owner notes, Petitioner’s argument implicitly concedes that
`
`there were at least two types of control systems—open-loop and closed-loop.
`
`See id. at 16. The expert opinion on which Petitioner relies in asserting that
`
`Takehiko must use open-loop control begins with the acknowledgement that
`
`“Takehiko does not explicitly describe how the above engine operation is
`
`controlled.” Ex. 1003 ¶ 110. The opinion flowing from that silence also is
`
`premised on silence—“Takehiko implicitly teaches the use of open loop
`
`control to manage its engine operation because Takehiko is silent on the use
`
`of any knock detection apparatus.” Id. Petitioner’s expert does not explain
`
`adequately why Takehiko’s silence on the details of the controls is
`
`noteworthy where Takehiko does not appear to be concerned with the
`
`specific control scheme. In light of the admitted existence of at least two
`
`control options, Takehiko’s silence is an inadequate basis for inherent
`
`disclosure.
`
`
`
`We determine that Petitioner has failed to demonstrate a reasonable
`
`likelihood of prevailing in this anticipation challenge to independent claim 1
`
`based on Takehiko. The remaining claims subject to this Ground 1 depend
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`14
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`from claim 1, and Petitioner’s arguments for those claims do not cure the
`
`underlying defect in the challenge to independent claim 1. See Pet. 19–22.
`
`E.
`
`The Alleged Obviousness of Claims 3 and 4 Over Takehiko and
`Kobayashi (Ground 2)
`
`1. Kobayashi (Ex. 1005)
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`Kobayashi “pertains to a technique of controlling auto ignition of the
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`air-fuel mixture to take out power with a high efficiency, while effectively
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`reducing emission of air pollutants through combustion.” Ex. 1005, 1:13–
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`16. Kobayashi’s Figure 1 is reproduced below.
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`Id., Fig. 1. Kobayashi’s Figure 1 depicts “the structure of an engine . . . that
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`adopts [Kobayashi’s] premix compression ignition combustion system.”
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`Ex. 1005, 7:39–41. Engine 10 includes two fuel injection valves (valves 14,
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`15). Id. at 9:44–47. Gasoline is injected through valve 15 into intake
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`conduit 12 and hydrogen gas is injected through valve 14 into the
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`15
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`IPR2019-01400
`Patent 8,069,839 B2
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`combustion chamber. Id. at 9:47–50. Kobayashi discloses that, in addition
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`to hydrogen gas, liquid fuels with higher octane values than gasoline, such
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`as methanol and ethanol, may be used. Id. at 9:58–63.
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`Engine control unit (ECU) 30 controls engine 10, including fuel
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`injection valves 14, 15, and spark plug 136. Id. at 10:16–17, 27–29.
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`ECU 30 also detects engine knocking using knocking sensor 25. Id.
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`at 10:34–36. Under the ECU’s control, when the engine is under a high load
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`condition, hydrogen is injected into the cylinder to prevent knocking. Id.
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`at 11:58–64, 12:7–12, 13:50–56. The hydrogen is ignited by spark plug 136.
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`Id. at 13:50–56.
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`2. Petitioner’s Challenge to Claims 3 and 4
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`
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`Claims 3 and 4 depend from independent claim 1 and contain
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`recitations pertaining to a knock detector. Ex. 1001, 7:15–21. Petitioner’s
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`obviousness challenge to claims 3 and 4 is premised on the inherency of the
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`use of open loop control in Takehiko, as discussed above. See, e.g., Pet. 23
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`(“A POSITA would have combined the teachings of open loop control of
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`Takehiko with the knock detector of Kobayashi to suppress knock.”), 25
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`(“[I]t would be apparent to a POSITA to utilize both open loop control, as in
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`Takehiko, and closed loop control, as in Kobayashi.”). In light of our
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`determination that the inherency argument is insufficient, we also determine
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`that Petitioner fails to satisfy its initial burden with respect to Ground 2.
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`F.
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`The Alleged Anticipation of Claims 1–4, 6 and 7 by Kinjiro
`(Ground 3)
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`
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`Petitioner alleges that independent claim 1 and its dependent
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`claims 2–4, 6, and 7 are anticipated by Kinjiro. Pet. 29–36. Patent Owner
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`argues that Petitioner has failed to show that Kinjiro discloses the recitation
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`of independent claim 1 concerning an increase in the ratio of directly
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`16
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`IPR2019-01400
`Patent 8,069,839 B2
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`injected fuel to port injected fuel above a selected torque value. See Prelim.
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`Resp. 26.
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`1. Kinjiro (Ex. 1008)
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`
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`Kinjiro is titled “Fuel Injection Apparatus for Internal Combustion
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`Engine.” Ex. 1008, code (54). Kinjiro relates to a fuel injection apparatus
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`where, “if knocking is detected by a knock detection means, fuel is injected
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`from both fuel injection valves in a first fuel injection valve provided in an
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`intake passage and a second fuel injection valve for injecting fuel directly
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`into a combustion chamber.” Id. ¶ 7. Kinjiro’s Figure 1 is reproduced
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`below.
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`
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`Figure 1 illustrates the main structures of Kinjiro’s fuel injection apparatus.
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`Ex. 1008, 8 (“Brief Description of the Drawings”). Kinjiro’s engine 1, a
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`“spark ignition type engine,” includes cylinder 1A, piston 1B, intake passage
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`2, and spark plug 3. Id. ¶¶ 10–11. The engine also includes injector 5,
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`located in intake passage 2, and injector 6, located in cylinder 1A. Id.
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`17
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`Patent 8,069,839 B2
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`¶¶ 11–13, Fig. 1. Engine 1 also includes knock sensor 7 and electronic
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`control unit 10. Id. ¶¶ 12–13.
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`
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`Kinjiro discloses that its engine operates in two states—a “normal
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`operating state,” where knocking is not occurring, and a “specified operating
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`state,” which is entered when knocking occurs. Id. ¶¶ 13, 14. During the
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`normal operating state, fuel is injected using injector 5 only and during the
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`specified operating state, fuel is injected using both injectors 5 and 6
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`(referred to as “split injection mode”). Id. ECU 10 initiates the specified
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`operating state when knock sensor 7 indicates that engine knocking is
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`occurring. Id. ¶¶ 13, 20.
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`2. Petitioner’s Anticipation Challenge Based on Kinjiro
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`
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`As mentioned above, claim 1, the sole challenged independent claim,
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`recites “above a selected torque value the ratio of fuel that is directly
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`injected to fuel that is port injected increases.” Ex. 1001, 7:8–10. Patent
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`Owner argues that “Petitioner fails to offer any explanation for how
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`Kinjiro . . . necessarily discloses . . . an increase in the ratio of DI to PI
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`occurring ‘above a selected torque value.’” Prelim. Resp. 26. Patent Owner
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`continues: “The Petition is silent on this key point, and its omission is fatal
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`to Petitioner’s anticipation argument” and “Petitioner does not even attempt
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`to map any disclosure of Kinjiro to the ‘selected value of torque’ element, let
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`alone an increase in a DI to PI ratio ‘above’ said ‘selected value of torque.’”
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`Id. at 26–27; see also id. at 27 (“But Petitioner never links anything in
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`Kinjiro to a change in the DI to PI ratio ‘above a selected torque value.’”).
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`We find Patent Owner’s arguments to be persuasive.
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`
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`According to Petitioner, the recited “‘selected torque value’ should be
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`construed to . . . mean ‘a specified value of torque on a torque-speed map’
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`consistent with the ordinary and customary meaning of the term.” Pet. 6
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`18
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`IPR2019-01400
`Patent 8,069,839 B2
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`(citing Ex. 1003 ¶¶ 94–95). However, we fail to discern whether or how
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`Petitioner contends that Kinjiro discloses either the recited “selected torque
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`value” or, under Petitioner’s own proposed construction, a specified value
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`on a torque-speed map. See id. at 30–33 (Petitioner’s discussion of
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`recitation 1.B).
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`
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`Petitioner asserts that, in Kinjiro, the DI-to-PI ratio increases “as
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`operation moves from the normal operating state to the split injection
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`mode,” and that ratio necessarily increases during the split injection mode.
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`Pet. 31. Petitioner further asserts that this move to the split injection mode
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`occurs due to the sensing of knock. Id. (“Engine 1 enters the second or split
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`injection mode upon the detection of knock in the first or normal operating
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`state.”). Thus, Petitioner’s assertions suggest that, in Kinjiro, a change in the
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`DI-to-PI ratio is triggered by the actual sensing of knock (as opposed to a
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`selected torque value) and a change of the ratio occurs after that trigger
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`point. Although Petitioner contends that the onset of knock is “associated”
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`with an increase in torque and that the subject ratio increases along with an
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`increase in torque, id. at 31, Petitioner does not adequately and clearly tie
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`any torque value to the recited “selected torque value” recited in claim 1.
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`Similarly, Petitioner does not adequately and clearly articulate how, under
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`its own proposed construction, a change of the subject ratio in Kinjiro is
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`related to a “specified value of torque on a torque-speed map.” See id. at 6
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`(Petitioner’s proposed construction).
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`
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`We determine that Petitioner has failed to demonstrate a reasonable
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`likelihood of prevailing in this anticipation challenge to independent claim 1
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`based on Kinjiro. The remaining claims subject to this Ground 3 depend
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`19
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`IPR2019-01400
`Patent 8,069,839 B2
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`from claim 1, and Petitioner’s arguments for those claims do not cure the
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`underlying defect in the challenge to independent claim 1. See Pet. 34–36.
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`G.
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`The Alleged Obviousness of Claim 5
`Over Kinjiro and Kobayashi (Ground 4)
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`
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`Petitioner alleges that claim 5 would have been obviousness over
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`Kinjiro and Kobayashi. Pet. 36–43. Patent Owner argues that, like
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`Ground 3, Petitioner has again failed to adequately address the “above a
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`selected torque value” recitation of claim 1. Prelim. Resp. 31–32.
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`
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`Claim 5 depends indirectly from independent claim 1 through
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`dependent claim 2,6 and recites: “The spark ignition engine of claim 2
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`where open loop control is used to determine the ratio of the directly injected
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`fuel to the port injected fuel.” Ex. 1001, 7:22–24.
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`As discussed above, Petitioner alleges that claims 1 and 2 are
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`anticipated by Kinjiro (Ground 3), and we have determined that Petitioner
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`has failed to meet its threshold burden for that ground. We understand
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`Petitioner to base this Ground 4 challenge to a dependent claim on that
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`anticipation challenge to independent claim 1. See Pet. 36–37. In this
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`obviousness ground of Ground 4, Petitioner relies on the secondary
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`reference, Kobayashi, for the teaching of the open loop control recited in
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`dependent claim 5. See id. at 37 (“Kinjiro does not explicitly teach the use
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`of open loop control in its engine operation. . . . However, a POSITA
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`would have understood that closed loop control and open loop control where
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`both well-known control mechanisms for controlling an engine, as illustrated
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`
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`6 Petitioner’s overview of Ground 4 suggests that Petitioner is analyzing
`claim 5 as if it depends directly from independent claim 1. See Pet. 36
`(referring to recitations of claims 1 and 5 but not of claim 2).
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`20
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`IPR2019-01400
`Patent 8,069,839 B2
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`by Kobayashi.”), 38 (same). In its articulation of Ground 4, Petitioner
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`acknowledges that independent claim 1 “recites that the ratio of DI to PI fuel
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`increases above a selected torque value,” id. at 36, but does not otherwise
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`mention that claim phrase, see id. at 36–43.
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`We determine that Petitioner has failed to demonstrate a reasonable
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`likelihood of prevailing in this challenge to dependent claim 5 as obvious
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`over Kinjiro and Kobayashi.
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`H.
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`The Alleged Obviousness of Claims 1–5 and 8
`Over Rubbert and Bosch (Ground
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