U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
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`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
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`
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`FORD MOTOR COMPANY
`
`Petitioner
`
`v.
`
`ETHANOL BOOSTING SYSTEMS, LLC, and MASSACHUSETTS INSTITUTE
`
`OF TECHNOLOGY,
`
`Patent Owner
`
`____________
`
`
`
`Case: IPR2019-01400
`
`U.S. Patent No. 8,069,839
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`____________
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`
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`PETITIONER’S REQUEST FOR REHEARING
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`PURSUANT TO 37 C.F.R. §42.71(d)
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`
`
`
`
`
`Request for Rehearing
`
`
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`
`
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`
`
`
`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: IPR2019-01400
`
`U.S. Patent No. 8,069,839
`
`____________
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`
`PURSUANT TO 37 C.F.R. §42.71(d)
`
`
`
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`
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
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`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. ARGUMENT .................................................................................................. 1
`
`A.
`
`The Board Erred in its Analysis of the Term “above a selected
`torque value” ......................................................................................... 1
`
`1.
`
`i.
`
`ii.
`
`2.
`
`i.
`
`3.
`
`4.
`
`The Board Erred in Failing to Construe the Term “above
`a selected torque value” .............................................................. 1
`
`The Board Appears to Have Overlooked Petitioner’s
`Proposed Construction of the Term “above a selected
`torque value” ............................................................................... 2
`
`The Board Appears to Have Interpreted the Term “above
`a selected torque value” More Narrowly than Patent
`Owner Intended ........................................................................... 3
`
`The Board Appears to Have Misapprehended Petitioner’s
`Arguments Regarding Takehiko Based on Its Overly
`Narrow Interpretation of the Term “above a selected
`torque value” ............................................................................... 5
`
`The Board Appears to Have Misapprehended Petitioner’s
`Inherency Argument ................................................................... 7
`
`The Board Appears to Have Misapprehended the
`Teachings of Kinjiro Based on Its Overly Narrow
`Interpretation of the Term “above a selected torque
`value” .......................................................................................... 9
`
`The Board Appears to Have Misapprehended Petitioner’s
`Arguments Regarding the Teachings of Rubbert .....................11
`
`B.
`
`The Board Erred in Its Analysis of the Term “substantially
`stoichiometric” ....................................................................................11
`
`i
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`1.
`
`2.
`
`3.
`
`The Board Appears to Have Misapprehended the
`Recitation of “lean” in Rubbert, as well as Dr. Clark’s
`Testimony ..................................................................................11
`
`The Board Appears to Have Interpreted the Term
`“substantially stoichiometric” More Narrowly Than
`Patent Owner Intended ..............................................................13
`
`The Board Appears to Have Misapprehended Petitioner’s
`Arguments with Respect to the Three-Way Catalyst ...............14
`
`III. CONCLUSION ............................................................................................15
`
`
`
`
`
`
`
`ii
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`
`01 Communique Lab., Inc. v. Citrix Sys.,
`889 F.3d 735 (Fed. Cir. 2018)....................................................................................................4
`
`AbbVie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology Tr.,
`764 F.3d 1366 (Fed. Cir. 2014)..................................................................................................8
`
`AVX Corp. v. Greatbatch Ltd.,
`IPR2015-00710, Paper 13 (PTAB Jan. 13, 2016) ....................................................................13
`
`Geosys-Intl., Inc. v. Farmers Edge Precision Consulting Inc.,
`IPR2015-00709, Paper 36 (PTAB Nov. 22, 2016) ....................................................................3
`
`Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC,
`IPR2018-00816, Paper 19, slip op. (PTAB Jan. 8, 2019) ..........................................................4
`
`Kinik Co. v. Chien-Min Sung,
`IPR2014-01523, Paper 26 (PTAB Nov. 4, 2015) ..................................................................8, 9
`
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
`IPR2013-00369, Paper 39 (PTAB Feb. 14, 2014) .....................................................................1
`
`Pernix Ir. Pain DAC v. Alvogen Malta Operations Ltd.,
`323 F. Supp. 3d 566 (D. Del. 2018) ...........................................................................................8
`
`Star Fruits S.N.C. v. United States,
`393 F.3d 1277 (Fed. Cir. 2005)..................................................................................................1
`
`OTHER AUTHORITIES
`
`37 C.F.R. §§42.6(e), 42.105...........................................................................................................17
`
`37 C.F.R. § 42.71(d) ..................................................................................................................1, 17
`
`
`
`
`
`iii
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`
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`
`
`LIST OF EXHIBITS
`
`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1001
`
`’839 Patent
`
`U.S. Patent No. 8,069,839
`
`Ex. 1002
`
`’839 File History File History of U.S. Patent No. 8,069,839
`
`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
`
`RESERVED
`
`RESERVED
`
`Ex. 1007
`
`Rubbert
`
`German Patent Application No.
`DE19853799
`
`Ex. 1008
`
`Kinjiro
`
`Japanese Patent Application Publication No.
`JP2002227697
`
`Ex. 1009
`
`RESERVED
`
`RESERVED
`
`Ex. 1010
`
`RESERVED
`
`RESERVED
`
`Ex. 1011
`
`RESERVED
`
`RESERVED
`
`Ex. 1012
`
`RESERVED
`
`RESERVED
`
`Ex. 1013
`
`RESERVED
`
`RESERVED
`
`Ex. 1014
`
`RESERVED
`
`RESERVED
`
`Ex. 1015
`
`RESERVED
`
`RESERVED
`
`Ex. 1016
`
`RESERVED
`
`RESERVED
`
`Ex. 1017
`
`RESERVED
`
`RESERVED
`
`Ex. 1018
`
`’572 File History File History of U.S. Patent No. 7,971,572
`
`iv
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`
`
`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`Exhibit
`
`Short Name
`
`Description
`
`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
`
`Kreikemeier
`
`U.S. Patent No. 6,681,752
`
`Ex. 1029
`
`Takehiko
`
`Japanese Patent Application Publication No.
`JP63230920
`
`Ex. 1030
`
`’717 File History File History of U.S. Patent Application No.
`13/591,717
`
`Ex. 1031
`
`Bosch
`
`Bosch Automotive Handbook (3rd Ed.)
`
`v
`
`
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1032
`
`Stokes
`
`J. Stokes et al. “A gasoline engine concept
`for improved fuel economy—the lean-boost
`system,” SAE paper 2001-01-2902, 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
`
`RESERVED
`
`RESERVED
`
`Ex. 1036
`
`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)
`
`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
`
`RESERVED
`
`RESERVED
`
`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 issued in 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
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`RESERVED
`
`RESERVED
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`Ex. 1044
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`RESERVED
`
`RESERVED
`
`vi
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`
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
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`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1045
`
`RESERVED
`
`RESERVED
`
`Ex. 1046
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`RESERVED
`
`RESERVED
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`Ex. 1047
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`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)
`
`
`
`vii
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`
`
`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.71(d), Petitioner respectfully requests rehearing of
`
`the Board’s Decision Denying Inter Partes Review, Paper No. 11 (the “Decision”)
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`and that the Board institute inter partes review of Claims 1-8 (the “Challenged
`
`Claims”) of U.S. Patent No. 8,069,839 (the “’839 Patent”).
`
`II. ARGUMENT
`
`The Decision constitutes an abuse of discretion. Palo Alto Networks, Inc. v.
`
`Juniper Networks, Inc., IPR2013-00369, Paper 39 at 2-3 (PTAB Feb. 14, 2014)
`
`(citing Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005)).
`
`First, the Board erred in its analysis of the term “above a selected torque value” by
`
`failing to construe the term and by misapprehending Petitioner’s arguments as to
`
`Takehiko, Kinjiro, and Rubbert due to the Board’s interpretation of that term. See
`
`infra Section II.A. Second, the Board misapprehended or overlooked Petitioner’s
`
`arguments concerning Rubbert, see infra Section II.B, and thus erred in finding that
`
`Petitioner had not demonstrated a reasonable likelihood of prevailing in showing
`
`that at least one of the challenged claims is unpatentable.
`
`A. The Board Erred in its Analysis of the Term “above a selected
`torque value”
`
`1. The Board Erred in Failing to Construe the Term “above a
`selected torque value”
`
`1
`
`
`
`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`i.
`
`The Board Appears to Have Overlooked Petitioner’s
`Proposed Construction of the Term “above a selected
`torque value”
`
`Petitioner argued that “[t]he terms ‘selected torque value’ and ‘some value of
`
`torque’… are used throughout the challenged claims to define one or more values at
`
`which the engine changes operation from reliance on PI alone to reliance on PI and
`
`DI or the engine changes from reliance on PI and DI to reliance on DI alone.”
`
`Petition, 5. Patent Owner did not dispute Petitioner’s argument; nor could Patent
`
`Owner have disputed it, given its positions elsewhere as well as the fact that the term
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`“selected torque value” is never mentioned in the specification. Petitioner further
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`argued that “selected torque value” is equivalent to “selected load value” and means
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`“a specified value of torque on a torque-speed map.” Petition, 6; see also Ex. 1003,
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`¶¶ 94-95 (citing Ex. 1036, 2, 4 (similarly equating torque and load)).
`
`
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`Thus, Petitioner argued that “above a selected torque value” was broader than
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`the Board’s ultimate interpretation of that term. While the Board stated that it did
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`not need to determine whether Petitioner’s proposed construction was correct in
`
`order to resolve the dispute (Decision, 9), the Board nevertheless implicitly
`
`interpreted the term more narrowly than, and at odds with, Petitioner’s proposed
`
`construction. See, e.g., Decision, 13-14, 18-19, 20-21, 25-26. That is, the Board
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`appears to have required the presence of a single pre-selected value, whereas the
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`claim and Petitioner’s proposed construction simply require “a specified value of
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`2
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
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`torque on a torque-speed map.” The failure to construe this term was an abuse of
`
`discretion in light of the Board’s reliance on its own, implicit construction of the
`
`term in its analysis. Geosys-Intl., Inc. v. Farmers Edge Precision Consulting Inc.,
`
`IPR2015-00709, Paper 36, at *4-5 (PTAB Nov. 22, 2016) (rehearing granted where
`
`a decision not to institute on certain grounds was based on the Board’s
`
`misapprehension of what the claim required, having previously construed a term too
`
`narrowly).
`
`ii.
`
`The Board Appears to Have Interpreted the Term
`“above a selected torque value” More Narrowly than
`Patent Owner Intended
`
`
`
`As the Board acknowledged, the Claim Construction Order “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.’” Decision, 10, fn. 5;
`
`see also Ex. 1041, 2. While the Decision states that the Board “reviewed and
`
`considered the District Court’s constructions,” the Board also recognized that the
`
`claim construction hearing (and thus the Claim Construction Order) occurred after
`
`the Petition and Patent Owner’s Preliminary Response had been filed. Decision, 10.
`
`In light of the Board’s interpretation of “above a selected torque value,” the
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`arguments made in District Court to secure that Court’s “plain and ordinary
`
`meaning” ruling are now of particular importance, whereas they were not so prior to
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`issuance of the Decision.
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`3
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`
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`When seeking to admit new evidence with a rehearing request, “a party may
`
`argue ‘good cause’ exists in the rehearing request itself.” Huawei Device Co., Ltd.
`
`v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19, slip op. at *4 (PTAB Jan.
`
`8, 2019) (precedential). In the present instance, “good cause” exists to submit the
`
`Joint Claim Construction Brief, filed on December 6, 2019, after Patent Owner’s
`
`Preliminary Response. Such “good cause” is supported by the Board’s consideration
`
`of the District Court’s decision, which was influenced by, and founded on, Patent
`
`Owner’s arguments during claim construction. In addition, Patent Owner should not
`
`be allowed to argue in District Court for a broad claim interpretation in order to
`
`maintain its infringement theories while simultaneously enjoying a narrow
`
`interpretation to avoid invalidity. See 01 Communique Lab., Inc. v. Citrix Sys., 889
`
`F.3d 735, 743 (Fed. Cir. 2018) (“[C]laim terms must be construed the same way for
`
`both invalidity and infringement.”) (internal quotations omitted). Considering the
`
`underlying arguments from the District Court is therefore appropriate.
`
`In the District Court, Patent Owner advanced a broad interpretation of “above
`
`a selected torque value.” Ex. 1049, 47. Patent Owner stated that the claim “requires
`
`only that there be ‘a’ selected torque level above which the ratio increases.” Id.
`
`(Emphasis added). Patent Owner further stated that the claim language does not need
`
`to be permanent and is broad enough to encompass “one or more” selected torque
`
`levels above which the ratio increases. Id. In other words, Patent Owner asserted that
`
`4
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`
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`the claim scope was much broader than what the Board implicitly adopted, such that
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`the scope would encompass any specified value of torque on the torque-speed map
`
`above which the ratio of directly injected fuel increases.1 In the words of Patent
`
`Owner, “[n]othing more is required.” Ex. 1049, 49.
`
`
`
`Patent Owner’s broader interpretation of “above a selected torque value” is
`
`likewise underscored by its contentions in the District Court, as referenced in the
`
`Petition. See Petition, 6. Patent Owner merely pointed to where the “ratio of fuel that
`
`is directly injected to fuel that is port injected increases.” Id., at 2. As Petitioner
`
`argued in the Petition, Dependent Claims 3 and 5 further limit the scope of
`
`Independent Claim 1 (see, e.g., Petition, 22, 36), and “above a selected torque value”
`
`must be interpreted to accommodate the dependent claims.
`
`
`
`Given the understanding urged by Patent Owner, Petitioner only needed to
`
`show any point at which the ratio of direct injection (“DI”) to port injection (“PI”)
`
`increases.
`
`2. The Board Appears to Have Misapprehended Petitioner’s
`Arguments Regarding Takehiko Based on Its Overly Narrow
`Interpretation of the Term “above a selected torque value”
`
`
`1 Claim 2 requires that the ratio of DI to PI is always increasing so long as torque is
`
`increasing—meaning that any point on the torque-speed map could be the “selected
`
`torque value.” Claim 2 is non-sensical in view of the Decision.
`
`5
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`
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`
`
`Applying its overly narrow interpretation of “above a selected torque value,”
`
`the Board misapprehended Petitioner’s arguments regarding the Takehiko reference
`
`(Ex. 1029). The Board determined that “Petitioner has failed to demonstrate a
`
`reasonable likelihood of prevailing in this anticipation challenge to Independent
`
`Claim 1 based on Takehiko” because “[i]n light of the admitted existence of at least
`
`two control options, Takehiko’s silence [on a specific control scheme] is an
`
`inadequate basis for inherent disclosure.” Decision, 14. However, the plain language
`
`of Claim 1 does not require any specific control scheme. Ex 1001, 7:7-11. Claim 1
`
`does not require either Open Loop or Closed Loop Control; rather, it only requires
`
`that “above a selected torque value the ratio of fuel that is directly injected to fuel
`
`that is port injected increases.” Id. Indeed, and according to Patent Owner, Petitioner
`
`only needs to show any point at which the ratio of direct injection to port injection
`
`increases. Takehiko discloses this limitation. Petition, 15-17.
`
`Takehiko discloses that PI is used alone at low loads. Petition, 15-17; see also
`
`Ex. 1029, 4; Ex. 1003, ¶ 109. Takehiko further discloses that at higher loads, direct
`
`fuel injection may be used, thereby increasing the ratio of fuel that is directly injected
`
`to fuel that is port injected. Petition, 15-17; see also Ex. 1029, 4; see also Ex. 1003,
`
`¶ 109. As explained at § II.A.1.ii supra, the “selected torque value” is simply the
`
`point at which the engine starts blending DI with PI. Takehiko thus anticipates the
`
`6
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`
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`“above a selected torque value the ratio of fuel that is directly injected to fuel that is
`
`port injected increases” limitation. Petition, 16-17.
`
`Even if Claim 1 were interpreted to require Open Loop or Closed Loop
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`Control, Petitioner has provided such a showing of Open Loop Control. Petition, 16.
`
`As Dr. Clark explains, “to prevent knock Takehiko would need to anticipate
`
`circumstances of parameters indicative of knock.” Ex. 1003, ¶ 110. Dr. Clark further
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`explains that there are two types of control: Open Loop and Closed Loop. Id., ¶ 40.
`
`Open Loop Control uses a “predetermined correlation between knock resistance and
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`the use and amount of port fuel injection and direct fuel injection.” Id., ¶ 110. Closed
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`Loop Control uses a “knock detection apparatus.” Id., ¶ 110.
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`There is no disclosure in Takehiko of the use of a knock detection apparatus,
`
`but Takehiko is nevertheless clear that knock is prevented. Ex. 1029, 2 (“The present
`
`invention was created to . . . avoiding knocking even when gasoline is directly
`
`injected into the cylinder.”); see also id., 4 (“[G]eneration of knocking in the area
`
`around exhaust 15 is prevented.”). As confirmed by Dr. Clark’s testimony cited
`
`above, this is sufficient to show that Takehiko implicitly taught the use of Open
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`Loop. Petition, 15-17; see also Ex. 1003, ¶¶ 104, 110.
`
`i.
`
`to Have Misapprehended
`The Board Appears
`Petitioner’s Inherency Argument
`
`Petitioners’ inherency argument relies on the “genus-species” approach. See
`
`Pernix Ir. Pain DAC v. Alvogen Malta Operations Ltd., 323 F. Supp. 3d 566, 591
`
`7
`
`
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`(D. Del. 2018) (“An alternative method of showing inherent anticipation is to use
`
`the genus-species approach” where “the issue of anticipation turns on whether the
`
`genus was of such a defined and limited class that one of ordinary skill in the art
`
`could at once envisage each member of the genus.”) (internal quotations omitted).
`
`To “find that a generic disclosure anticipates a species within a particular genus” the
`
`generic reference must either “express ‘specific preferences’ for one or more
`
`particular species” or “disclose a genus that is sufficiently small that the disclosure
`
`of the genus effectively describes the species.” Id. (citing AbbVie Inc. v. Mathilda &
`
`Terence Kennedy Inst. of Rheumatology Tr., 764 F.3d 1366, 1379 (Fed. Cir. 2014)).
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`As explained above and in the Petition, Takehiko discloses that in operation
`
`its engine prevents knock from occurring. Petition, 15; see also Ex. 1029, 2, 4. As
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`Dr. Clark testified, in order to do so Takehiko must use a control system as Takehiko
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`has a load or torque value whereby its engine begins to rely on DI to prevent knock,
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`and thus, Takehiko inherently discloses the genus of control system. Ex. 1003, ¶¶
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`102-104; see also Kinik Co. v. Chien-Min Sung, IPR2014-01523, Paper 26, at *22
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`(PTAB Nov. 4, 2015) (“We are persuaded that Chou discloses brazing, and thus
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`inherently discloses using a brazing material, i.e., a genus.”). As further described
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`by Dr. Clark’s testimony, the only control system options are Open Loop and Closed
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`Loop. Petition, 15-17; see also Ex. 1003, ¶¶ 109-110. Thus, the genus only has two
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`species. See Kinik Co., Paper 26, at *22 (“We are persuaded also that this genus
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`8
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
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`would consist of only two species, pure metals and metal alloys, because those are
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`the only two options available.”). No evidence to the contrary is in the record.
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`Takehiko thus anticipates Claim 1 through its inherent disclosure of a control
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`system. See Ex. 1003, ¶¶ 109-110; see also Ex. 1029, 2-4.
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`3. The Board Appears to Have Misapprehended the Teachings
`of Kinjiro Based on Its Overly Narrow Interpretation of the
`Term “above a selected torque value”
`
`The Board’s overly narrow interpretation appears to have resulted in its
`
`misapprehension of the teachings of Kinjiro. The Petition stated that Kinjiro
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`discloses moving from PI alone to a combination of PI and DI when knock is
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`detected. Petition, 30-31; see also Ex. 1008, ¶ [0014] (“[T]he operation is performed
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`by injecting fuel from the main injector 5 during normal operation, and while in the
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`specified operation state where knocking is detected, fuel injection is performed
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`from the two injectors 5 and 6 to suppress knocking.”) (emphasis added). Petitioner
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`further explained that this move from PI alone to PI and DI occurs when torque
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`increases above a selected value—a value where knock occurs. Id. Dr. Clark’s
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`declaration confirmed that Kinjiro used the detection of knock when torque increases
`
`above a certain value to move from the normal operation state to the “second or split
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`injection mode.” Ex. 1003, ¶¶ 144-146, 152-157. Indeed, Dr. Clark stated that FIG.
`
`6B illustrates that pressure and temperature define a zone in which knocking will
`
`occur and a zone in which knocking will not occur. Ex. 1003, ¶ 155.
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`9
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
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`As explained in § II.A.1.ii, supra, Claim 1 does not require the use of Closed
`
`Loop Control (knock detector), specifically, or Open Loop Control (lookup table),
`
`specifically, to control the ratio of DI/PI fuel. See Ex. 1001, 7:7-11; see also id., 3:2-
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`10. Dependent Claim 5, however, limits the scope of Claim 1 to “where open loop
`
`control is used to determine the ratio.” Ex. 1001, 7:22-24. Similarly, Dependent
`
`Claim 3 further limits the scope of Claim 1 to “where the ratio . . . is determined by
`
`a signal from a knock detector.” Ex. 1001, 7:15-17. Independent Claim 1 therefore
`
`must also be broad enough to accommodate the use of a knock detector to determine
`
`the ratio of DI/PI, as well as the use of Open Loop Control.
`
`Patent Owner agreed that Kinjiro discloses that, “when knock is detected, the
`
`engine enters a ‘specified operating state’ . . . in which both direct injection and port
`
`injection are used.” POPR, 26. Patent Owner disputes only that this transition from
`
`PI alone to both PI and DI together occurs “above a selected torque value.” Id. Patent
`
`Owner essentially argues that, because the transition occurs due to Kinjiro’s knock
`
`detector (e.g., based on knock and not based on a sensed condition from the knock
`
`detector), it does not satisfy this limitation. Claim 1 is not so limited, and as
`
`explained above, its scope must be broad enough to encompass determination of the
`
`ratio of DI/PI through use of a knock detector. Patent Owner’s argument is non-
`
`sensical, as the torque or load value that causes knock is a selected torque value.
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`10
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
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`Indeed, Patent Owner admits that in order to meet to Claim 1, only an increase in the
`
`ratio of DI to PI is needed; “[n]othing more is required.” See § II.A.1, supra.
`
`4. The Board Appears to Have Misapprehended Petitioner’s
`Arguments Regarding the Teachings of Rubbert
`
`The Board’s narrow interpretation of “above a selected torque value” resulted
`
`in its misapprehension of Petitioner’s arguments regarding Rubbert. The Petition
`
`states that “Rubbert discloses that the ratio of DI to PI fuel increases above a certain
`
`load value, i.e., the threshold between the low load range and the high load range.”
`
`Petition, 48; Ex. 1003, ¶ 201. “[S]elected torque value” and “selected load value”
`
`are the same. Petition, 6; Ex. 1003, ¶¶ 92-95. The Board’s apparent misapprehension
`
`of Rubbert’s teachings is demonstrated by its statement in the Decision that
`
`“Petitioner does not state whether it contends that this ‘certain’ value is a ‘selected’
`
`one, and, if so, also fails to articulate its theory as to why that is.” Decision, 26.
`
`Irrespective of the clear language from Rubbert disclosing a “certain” value, a
`
`“selection” of a particular value is not required by the claim. Rather, Claim 1 requires
`
`that the ratio of DI/PI increase above a selected torque value. Rubbert discloses an
`
`increase of the ratio of DI to PI fuel at the predetermined threshold between the low
`
`load range and the high load range. Petition, 48.
`
`B. The Board Erred in Its Analysis of the Term “substantially
`stoichiometric”
`
`1. The Board Appears to Have Misapprehended the Recitation
`of “lean” in Rubbert, as well as Dr. Clark’s Testimony
`
`11
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`The Board states that Rubbert discloses that, at low loads, “[t]he directly
`
`injected fuel in this [partial] load range results in an ignitable mixture near the spark
`
`plug and allows reliable ignition of the lean mixture in the entire combustion
`
`chamber.” Decision, 24 (citing Ex. 1007, 2:1-2). The Board’s determination
`
`misapprehends the teachings of Rubbert, for at least two reasons.
`
`First, as Petitioner and Dr. Clark explained, Rubbert does not teach either for
`
`or against a requirement that the overall fuel/air ratio be substantially stoichiometric.
`
`Petition, 48; Ex. 1003, ¶ 202. Rather, Rubbert operates such that a “lean mixture” is
`
`introduced into the chamber via PI, and the remainder of fuel is added via DI (e.g.,
`
`a rich mixture), which “allows reliable ignition of [that] lean mixture.” Ex. 1007,
`
`2:1-2. Indeed, the port injected fuel must be lean; otherwise, adding any directly
`
`injected fuel would result in an overall rich mixture. Petition, 35 (citing Ex. 1003, ¶
`
`176 (Dr. Clark describing the teachings of Kinjiro but explaining that the lean
`
`mixture introduced by port injection must be supplemented with a locally rich
`
`mixture from the direct injector)). This disclosure relating to PI fuel only, contrary
`
`to the Board’s determination, does not state that the overall mixture of Rubbert is
`
`lean. Rather, it states that the direct injection of fuel “allows reliable ignition” of the
`
`lean port injected fuel. Furthermore, Rubbert teaches that injection “near the spark
`
`plug” allows ignition of “the lean mixture in the entire combustion chamber,” further
`
`corroborating the understanding that the “lean mixture” is in the chamber before
`
`12
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`
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`direct injection, not after it. Ex. 1007, 2:1-2. Patent Owner did not provide any
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
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`rebuttal testimony.
`
`Second, Dr. Clark did not ignore Rubbert’s teaching of a lean-PI mixture as
`
`part of the total fuel in the engine, but rather acknowledged Rubbert’s silence as to
`
`the overall fuel/air ratio. Ex. 1003, ¶¶190, 202.2 Dr. Clark further explains that a
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`POSITA would look to Bosch’s teachings in light of Rubbert’s silence on the overall
`
`fuel/air ratio. The Board’s misapprehension of Dr. Clark’s testimony constitutes an
`
`abuse of discretion. AVX Corp. v. Greatbatch Ltd., IPR2015-00710, Paper 13, at *6,
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`15 (PTAB Jan. 13, 2016) (granting a Request for Rehearing largely on the basis that
`
`the Board did not sufficiently consider Petitioner’s expert testimony).
`
`2. The Board Appears to Have Interpreted the Term
`“substantially stoichiometric” More Narrowly Than Patent
`Owner Intended
`
`
`
`Furthermore, Claim 1 does not require that the fuel/air mixture be
`
`substantially stoichiometric over the entire torque range or within a particular engine
`
`region. Instead, Claim 1 requires only that “the engine is operated at a substantially
`
`
`2 Dr. Clark testified throughout his declaration that fuel injected via port injection is
`
`sufficiently lean. See, e.g., Ex. 1003, ¶147. The same is true throughout the claim
`
`charts provided by Patent Owner—“80 percent to 70 percent of the fuel is delivered
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`through the DI system.” Ex. 1036, 1.
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`13
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
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`stoichiometric fuel/air ratio.” Ex. 1001, 7:10-11. In the District Court, Patent Owner
`
`interpreted “substantially stoichiometric” broadly, contending that the Accused
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`Engines “operated at a substantially stoichiometric fuel/air ratio” notwithstanding a
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`+/- 20 Lambda with no fueling. Ex. 1036, 3. Patent Owner further confirmed in its
`
`Preliminary Response that “there is a ‘narrow’ ‘window’ around the ‘stoichiometric
`
`mixture’ that is compatible with ‘[t]he three-way’ or selective catalytic converter.”
`
`POPR, 19. Nevertheless, the Board interpreted “substantially stoichiometric” more
`
`narrowly than either party contended.
`
`3. The Board Appears to Have Misapprehended Petitioner’s
`Arguments with Respect to the Three-Way Catalyst
`
`The Board appears to have overlooked Petitioner’s arguments regarding the
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`three-way catalyst after it misinterpreted the teachings of Rubbert. Rubbert is a spark
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`ignited internal combustion engine. Petition, 45-48; see also Ex. 1007, 1:3-5, 1:31-
`
`34. The Petition cited Bosch’s teaching that “spark ignited engines run on a
`
`stoichiometric mixture” which “is required for the three-way catalyst.” Id. (citing
`
`Ex. 1031, 478-479; Ex. 1003, ¶ 205). As Petitioner explained, Bosch disclosed that
`
`“the performance of a three-way catalyst depends on a stoichiometric fuel/air ratio
`
`(lambda value of 1).” Petition, 50 (citing Ex. 1031, 481; Ex. 1003, ¶ 205). Petitioner
`
`further argued that “major industrial nations had adopted the three-way catalyst at
`
`the time of publication.” Petition, 50 (citing Ex. 1031, 479). This evidence should
`
`not have been overlooked.
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`14
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`U.S. PATENT NO. 8,069,839
`Request for Rehearing
`
`Patent Owner confirmed Bosch’s teaching in its Preliminary Response
`
`(POPR, 19), and similarly alleged in the District Court that the “substantially
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`stoichiometric” limitation was satisfied because of the Accused Product’s use of
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`“‘three way’ catalytic converters, which are understood in the industry to e
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