Trials@uspto.gov
`571-272-7822
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`Paper 14
`Date: April 27, 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 Petitioner’s Request for Rehearing of the Decision Denying
`Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`

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`IPR2019-01400
`Patent 8,069,839 B2
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`
`I.
`INTRODUCTION
`Ford Motor Company (“Petitioner”) filed a Request for Rehearing,
`
`Paper 12 (“Request or “Req. Reh’g”), of the Decision denying institution of
`inter partes review, Paper 11 (“Decision” or “Dec.”). Petitioner requests
`that the Petition be reheard and trial instituted. Req. Reh’g 15.
`
`For the reasons provided below, Petitioner’s Request for Rehearing is
`denied.
`
`II. ANALYSIS
`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). “The request must
`specifically identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously addressed in
`a motion, an opposition, or a reply.” Id. When rehearing a decision on a
`petition, we review the decision for an abuse of discretion. 37 C.F.R.
`§ 42.71(c).
`
`In its Request, Petitioner identifies two alleged errors in the Decision.
`Req. Reh’g 1; see also id. at i (Table of Contents, headings A and B).
`Petitioner first argues that we erred in our analysis of the claim phrase
`“above a selected torque value” by “failing to construe the term” and by
`misapprehending Petitioner’s arguments due to our “interpretation of that
`term.” Id. at 1. Petitioner also argues that we erred in our analysis of the
`claim phrase “substantially stoichiometric” and, due to this, misapprehended
`or overlooked Petitioner’s arguments concerning the Rubbert prior art
`reference. Id. at 1, 11.
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`IPR2019-01400
`Patent 8,069,839 B2
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`
`A.
`
`Alleged Errors Regarding the Construction of
`“Above a Selected Torque Value”
`Petitioner begins with the internally inconsistent argument that we
`
`“erred in [our] analysis of the term ‘above a selected torque value’ by failing
`to construe the term,” and that we “implicitly interpreted the term” and that
`we reached an “ultimate interpretation of that term.” Req. Reh’g 1
`(heading), 2. This argument does not persuade us of error in the Decision.
`
`Petitioner next argues that we must have rejected Petitioner’s
`proposed construction and that we implicitly gave the subject phrase an
`unduly narrow construction. Id. at 2–3. Specifically, Petitioner asserts:
`While the Board stated that it did 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 appears to have
`required the presence of a single pre-selected value, whereas the
`claim and Petitioner’s proposed construction simply require “a
`specified value of torque on a torque-speed map.”
`
`Id.
`Petitioner does not explain how it arrived at the conclusion that we
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`implicitly construed the phrase as it contends, and this conclusory assertion
`does not persuade us of error. Furthermore, Petitioner is incorrect. We did
`not construe the recited “selected torque value” as requiring a single value,
`and we did not need to reach that claim construction issue in order to
`determine that Petitioner had not met its threshold burden at the institution
`stage. 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. For the reasons discussed in the Decision, we
`determined that Petitioner had failed to demonstrate a likelihood of showing
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`Patent 8,069,839 B2
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`that the prior art discloses or teaches a ratio increase tied to a selected torque
`value. See Dec. 13–14 (addressing Petitioner’s inherency theory), 18–19
`(addressing Petitioner’s arguments as to Kinjiro, and determining that
`“Petitioner does not adequately and clearly tie any torque value to the recited
`‘selected torque value’ recited in claim 1.”), 21 (“In its articulation of
`Ground 4, Petitioner acknowledges that independent claim 1 ‘recites that the
`ratio of DI to PI fuel increases above a selected torque value,’ id. at 36, but
`does not otherwise mention that claim phrase, see id. at 36–43.”), 25
`(“Conspicuously absent from Petitioner’s discussion [of Rubbert] is the
`claim phrase ‘above a selected torque.’”). Even under the construction
`proposed in the Petition—a specified value of torque on a torque-speed
`map—the Petition fails to demonstrate a threshold showing. See, e.g., id.
`at 18–19 (“[W]e fail to discern whether or how Petitioner contends that
`Kinjiro discloses either the recited ‘selected torque value’ or, under
`Petitioner’s own proposed construction, a specified value on a torque-speed
`map.”). Petitioner’s argument regarding our purported implicit construction
`does not persuade us of error in the Decision.
`
`Petitioner next turns to claim construction matters from the related
`District Court action. Petitioner notes that we, in reaching our determination
`on institution, considered the District Court’s construction of the subject
`phrase as having its plain and ordinary meaning. Req. Reh’g 3. Petitioner
`argues, based on admittedly new evidence filed with its Request, that Patent
`Owner proposed a construction before the District Court that is broader than
`that purportedly adopted by the Board, and we, therefore, should now adopt
`Patent Owner’s purported construction for purposes of deciding whether to
`institute an inter partes review. Id. at 3–5. Petitioner argues, “[g]iven the
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`Patent 8,069,839 B2
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`understanding urged by Patent Owner [in the District Court], Petitioner only
`needed to show [in the Petition] any point at which the ratio of direct
`injection (‘DI’) to port injection (‘PI’) increases.” Id. at 5 (emphasis in
`original). We decline to entertain Petitioner’s new argument, particularly
`where that position apparently was not adopted in the District Court’s
`construction (which we did have in the record at the time of the Decision)
`and where Petitioner’s current “any point” position is at least different, if not
`inconsistent, with the “specified value of torque on a torque-speed map”
`position taken in the Petition. See Pet. 6.
`
`Petitioner next argues that we misapprehended its arguments
`regarding Takehiko because we, as addressed above, allegedly construed the
`“above a selected torque value” phrase too narrowly. Reh’g Req. 6
`(heading). Petitioner now argues that Takehiko discloses the limitation
`under Petitioner’s “any point” construction offered in the Request for
`Rehearing, which allegedly is Patent Owner’s proposed construction in the
`District Court, which allegedly is evidenced by an exhibit introduced into
`this case concurrently with the Request for Rehearing. See id. at 6 (citing
`Pet. 15–17; arguing: “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.”). In the Petition and
`prior to the Decision, Petitioner “adopt[ed] Patent Owner’s construction”
`and argued that “‘selected torque value’ should be construed to . . . mean ‘a
`specified value of torque on a torque-speed map’ consistent with the
`ordinary and customary meaning of the term.” Pet. 6. Petitioner applied this
`proposed construction in arguing that Takehiko inherently discloses the
`“above a selected torque value” limitation because “Takehiko implicitly
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`Patent 8,069,839 B2
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`teaches the use of open loop control to manage its engine operation” and
`therefore “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. at 16; see also Ex. 1003 ¶ 183
`(Petitioner’s expert distinguishing open loop control using a fuel map with
`closed loop control using a knock detector). We are not persuaded that we
`misapprehended the arguments made in the Petition, and we decline to
`reevaluate the Takehiko ground under Petitioner’s “any point” construction.
`
`Still discussing the “above a selected torque value” limitation,
`Petitioner argues that Takehiko, through its silence as to the control system
`used, discloses the use of open loop control, which, according to Petitioner,
`involves a predetermined correlation. Req. Reh’g 7 (citing Ex. 1003 ¶ 110).
`We addressed and found to be unpersuasive these arguments in the Decision.
`See Dec. 13–15. Petitioner’s arguments in the Request represent a
`disagreement with our determinations in the Decision, but fail to identify
`anything misapprehended or overlooked.
`
`Petitioner argues that we misapprehended Petitioner’s inherency
`argument, contending that “Petitioners’ inherency argument relies on the
`‘genus-species’ approach.” Req. Reh’g 7–9. Petitioner now asserts that
`Takehiko prevents knock so it must use some type of control system to do
`that (a genus), there are only two types of control options (species), and,
`therefore Takehiko necessarily and inherently discloses the particular option
`(species) that Petitioner feels it needs in order to show anticipation. Id.
`Petitioner does not clearly indicate where it argued genus-species in the
`Petition. To the contrary, the Petition was based on the theory that
`Takehiko’s silence as to one option necessarily means that Takehiko
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`discloses the other option, also upon which there is silence. See Pet. 15–16.
`The genus-species argument either is newly presented in the Request—and
`thus we could not have misapprehended it—or it rehashes the same
`arguments we addressed in the Decision—and thus is not something we
`misapprehended or overlooked.
`
`Petitioner argues that “[t]he Board’s overly narrow interpretation [of
`the “above a selected torque value” phrase] appears to have resulted in its
`misapprehension of the teachings of Kinjiro.” Req. Reh’g 9. Petitioner goes
`on to argue that Kinjiro discloses the subject limitation under the “any point”
`construction offered in the Request and seemingly disavows the construction
`it proposed in the Petition. See id. at 10 (“As explained in § II.A.1.ii [of the
`Request], supra, Claim 1 does not require the use of . . . Open Loop Control
`(lookup table [e.g., a torque-speed map]), specifically, to control the ratio of
`DI/PI fuel.”); see also id. at 10–11 (citing again to an earlier section of the
`Request and arguing that the limitation would be satisfied under Patent
`Owner’s purported infringement position in the District Court). Petitioner
`also appears to offer yet another proposed construction where sensing knock
`is the equivalent of selecting a torque value. Id. at 10 (arguing that the use
`of a knock sensor satisfies the subject limitation because “the torque or load
`value that causes knock is a selected torque value.”).
`
`We did not deny institution based on “the teachings of Kinjiro,”
`misapprehended or not. See Req. Reh’g 9. Rather, we denied institution
`because Petitioner did not explain adequately how any such teachings are
`tied to the “selected” aspect of the subject claim limitation. We explained:
`Although Petitioner contends that the onset of knock is
`“associated” with an increase in torque and that the subject ratio
`increases along with an increase in torque, id. at 31, Petitioner
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`Patent 8,069,839 B2
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`does not adequately and clearly tie any torque value to the
`recited “selected torque value” recited in claim 1. Similarly,
`Petitioner does not adequately and clearly articulate how, under
`its own proposed construction, a change of the subject ratio in
`Kinjiro is related to a “specified value of torque on a torque-
`speed map.” See id. at 6 (Petitioner’s proposed construction).
`Dec. 19. Petitioner has not persuaded us that we misapprehended anything
`in regard to its articulation in the Petition of the Kinjiro ground. Further, we
`decline to reevaluate that ground under Petitioner’s constructions newly
`offered in the Request.
`
`Petitioner similarly argues that “[t]he Board’s narrow interpretation of
`‘above a selected torque value’ resulted in its misapprehension of
`Petitioner’s arguments regarding Rubbert.” Req. Reh’g 11. We denied
`institution because we failed to find a discussion of the subject phrase in
`Petitioner’s articulation of the ground. Dec. 25. Petitioner now argues:
`“Claim 1 requires that the ratio of DI/PI increase above a selected torque
`value [and] 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.” Req. Reh’g 11 (emphasis added) (citing Pet. 48). The single
`paragraph in the Petition addressing the limitation does not contain any form
`of the claim term “selected” (Pet. 481) and does not contain the word
`“predetermined” (id.) that Petitioner now injects into its paraphrasing of the
`sentence we quoted in the Decision (Dec. 25). Petitioner does not persuade
`us that we erred in stating: “Without a clear, explicit contention and
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`1 We recognize that the single paragraph of analysis falls under a heading
`quoting the subject limitation, including the “selected torque value” term.
`Pet. 48. The analysis paragraph, however, asserts that “Rubbert discloses
`that the ratio of DI to PI fuel increases above a certain load value . . . .” Id.
`(emphasis added).
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`accompanying analysis, we only can conclude that Petitioner has not
`established a likelihood of prevailing on this challenge to independent
`claim 1.” Dec. 26.
`
`B.
`
`Alleged Errors Regarding the Analysis of
`“Substantially Stoichiometric”
`Claim 1 recites: “wherein the engine is operated at a substantially
`
`stoichiometric fuel/air ratio.” Ex. 1001, 7:10–11. A stoichiometric ratio is
`where the air and fuel are matched such that there is no excess oxygen
`present after the mix is combusted. Dec. 22 (quoting Ex. 1003 ¶ 113
`(Petitioner’s expert’s testimony)). A “stoichiometric air-fuel ratio”
`“define[s] the boundary between rich and lean operation.” Id. (quoting
`Ex. 1003 ¶ 113).
`
`Petitioner argues that we misapprehended the recitation of “lean” in
`Rubbert and misapprehended its expert’s testimony. Req. Reh’g 11
`(heading).
`
`In the Petition, Petitioner asserted that “Rubbert is silent regarding
`control systems and using a substantially stoichiometric fuel/air ratio” and
`“Rubbert . . . is silent regarding a substantially stoichiometric fuel/air ratio.”
`Pet. 43, 48 (citing Ex. 1003 ¶¶ 194, 202). Petitioner then used that
`proposition of silence as a springboard to argue that it would have been
`obvious to apply Bosch’s teaching of the use of a stoichiometric mixture to
`arrive at a combination having the claimed substantially stoichiometric ratio.
`Id. at 48–51. In response, Patent Owner argued that Rubbert is not silent,
`but rather “plainly teaches lean operation.” Prelim. Resp. 33. We, as did
`Patent Owner (id.), quoted Rubbert:
`Specifically, Rubbert states: “The directly injected fuel in this
`[partial] load range results in an ignitable mixture near the spark
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`plug and allows reliable ignition of the lean mixture in the
`entire combustion chamber.”
`Dec. 24 (quoting Ex. 1007, 2, col. 2). We determined that “Petitioner, in
`stating that Rubbert is silent, rather than acknowledging Rubbert’s lean mix
`at least at low loads, and then by focusing almost exclusively on Bosch’s
`discussion of stoichiometric mixtures—the claimed alternative—does not
`explain adequately why a person skilled in the art would utilize Bosch’s
`stoichiometric mixtures in Rubbert’s engine.” Id. at 24–25. “We
`determine[d] that Petitioner fail[ed] to supply adequate and persuasive
`reasoning with rational underpinning why a person of ordinary skill in the
`art would have modified Rubbert’s carefully crafted system” to arrive at the
`claimed system utilizing a stoichiometric ratio. Id. at 25. Thus, we denied
`institution because of Petitioner’s inadequate articulation and explanation,
`not any misunderstanding of Rubbert.
`
`In the Request, Petitioner now backtracks a bit. Whereas it took the
`position in the Petition that Rubbert was silent as to a fuel control system
`and a substantially stoichiometric ratio, Pet. 43, Petitioner now argues that
`the quoted portion of Rubbert refers to controlling the fuel so as to achieve
`lean port injection only and not as to the overall mixture, Req. Reh’g 12.
`Petitioner further argues that “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.” Id. at 13
`(emphasis in original) (citing Ex. 1003 ¶¶ 190, 202). Petitioner’s emphasis
`on the word “overall” highlights the flaw in the Petition; that word does not
`appear in the cited paragraphs of Dr. Clark’s testimony. See Ex. 1003
`¶¶ 190, 202. Although Dr. Clark, in describing the reference, did quote
`Rubbert’s disclosure of “the lean mixture in the entire combustion chamber,”
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`id. ¶ 190, Petitioner does not direct our attention where Dr. Clark explained
`that the discussion was limited to less than the “overall” mixture. Rather,
`Dr. Clark made the unqualified assertion of silence in the reference, with the
`subsequent opinions regarding a reason to modify Rubbert premised on
`leveraging that purported silence. See id. ¶¶ 194–198, 202.
`
`We are not persuaded that, in concluding that Petitioner failed to
`adequately explain why a person of ordinary skill in the art would have
`reason to make the proposed combination, Dec. 24–25, we erred due to
`misapprehension regarding either Rubbert or Petitioner’s expert’s testimony.
`
`Petitioner next argues that we interpreted “substantially
`stoichiometric” more narrowly than Patent Owner allegedly argued for
`infringement purposes in the District Court. Req. Reh’g 13–14. Petitioner’s
`argument in this regard does not contain a citation to either the Petition or
`the Decision, and therefore does not identify where this matter was
`previously addressed by Petitioner or where we allegedly interpreted
`“substantially stoichiometric.” Further, Petitioner does not explain how any
`purported interpretation affects the disposition of the case.
`
`Petitioner next argues that “[t]he Board appears to have overlooked
`Petitioner’s arguments regarding the three-way catalyst after it
`misinterpreted the teachings of Rubbert.” Req. Reh’g 14. Petitioner
`contends that the secondary reference, Bosch, teaches that a stoichiometric
`ratio is utilized with a three-way catalytic converter. Id. Petitioner further
`argues that “[t]he Board overlooks Bosch’s teachings and the articulated
`reasons for its combination with Rubbert because of its erroneous
`determination that Rubbert teaches a lean mixture such that it cannot operate
`as ‘substantially stoichiometric.’” Id. at 15 (citing Dec. 24–25). We did not
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`make a determination that Rubbert cannot operate as substantially
`stoichiometric. As discussed above, we denied institution based on
`Petitioner’s failure to adequately address Rubbert’s discussion of the use of a
`lean mixture and the associated failure to adequately explain why Rubbert
`would be modified or would be operated with a substantially stoichiometric
`mixture; the denial of institution was not based on a determination that
`Rubbert could not operate as proposed to be modified. We did not reach the
`merits of Petitioner’s assertions regarding Bosch and three-way catalysts,
`but we did not overlook such arguments. See Dec. 22–23 (“Petitioner turns
`to Bosch for details regarding those things about which Rubbert purportedly
`is silent.”), 24 (acknowledging and summarizing Petitioner’s arguments
`regarding Bosch), 24–25 (“Petitioner, in stating that Rubbert is silent, rather
`than acknowledging Rubbert’s lean mix at least at low loads, and then by
`focusing almost exclusively on Bosch’s discussion of stoichiometric
`mixtures—the claimed alternative—does not explain adequately why a
`person skilled in the art would utilize Bosch’s stoichiometric mixtures in
`Rubbert’s engine.”).
`
`III. CONCLUSION
`Having considered Petitioner’s Request, Petitioner has not persuaded
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`us, for the reasons discussed, that our Decision should be reheard and a trial
`instituted.
`IV. ORDER
`
`For the foregoing reasons, it is
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`ORDERED that Petitioner’s Request for Rehearing is denied.
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`IPR2019-01400
`Patent 8,069,839 B2
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`PETITIONER:
`Christopher Douglas
`christopher.douglas@alston.com
`
`Michael Connor
`mike.connor@alston.com
`
`Lauren Burrow
`lauren.burrow@alston.com
`
`Brian Hill
`brian.hill@alston.com
`
`PATENT OWNER:
`Lawrence Cogswell
`lawrence.cogswell@hbsr.com
`
`Keith Wood
`keith.wood@hbsr.com
`
`
`
`13
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