throbber
IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`C.A. No. 19-196 (CFC)
`
`DEMAND FOR JURY TRIAL
`
`
`) ) ) ) ) ) ) ) )
`
`
`
`) )
`
`
`
`ETHANOL BOOSTING SYSTEMS, LLC and
`THE MASSACHUSETTS INSTITUTE OF
`TECHNOLOGY,
`
`
`Plaintiffs,
`
`
`
`v.
`
`
`FORD MOTOR COMPANY,
`
`
`Defendant.
`
`DEFENDANT’S ANSWER, DEFENSES, COUNTERCLAIMS AND JURY DEMAND
`
`Defendant and Counterclaimant Ford Motor Company (“Ford”), hereby answers
`
`the Complaint filed on January 30, 2019 (“Complaint”) by Plaintiffs Ethanol Boosting Systems,
`
`LLC (“EBS”) and the Massachusetts Institute of Technology (“MIT”) (collectively, “Plaintiffs”),
`
`responding to the separately enumerated paragraphs of the Complaint as follows, and further
`
`asserts the Defenses and Counterclaims alleged below:
`
`The Parties
`
`1.
`
`Ford is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations contained in Paragraph 1 of the Complaint. Therefore, Ford denies
`
`the allegations contained in Paragraph 1 of the Complaint.
`
`2.
`
`Ford is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations contained in Paragraph 2 of the Complaint, except Ford is aware that
`
`Dr. Bromberg, Dr. Cohn and Professor Heywood have done work in the field of internal
`
`combustion engines. Therefore, except as expressly admitted, Ford denies the allegations
`
`contained in Paragraph 2 of the Complaint.
`
`FORD Ex. 1123, page 1
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`

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`3.
`
`Ford is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations contained in Paragraph 3 of the Complaint. Therefore, Ford denies
`
`the allegations contained in Paragraph 3 of the Complaint.
`
`4.
`
`Ford is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations contained in Paragraph 4 of the Complaint. Therefore, Ford denies
`
`the allegations contained in Paragraph 4 of the Complaint.
`
`5.
`
`Ford is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations contained in Paragraph 5 of the Complaint. Therefore, Ford denies
`
`the allegations contained in Paragraph 5 of the Complaint.
`
`6.
`
`Ford is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations contained in Paragraph 6 of the Complaint, except Ford understands
`
`on information and belief that Professor Heywood was Director of the Sloan Automotive
`
`Laboratory at MIT, that he did research and taught classes at MIT on internal combustion
`
`engines, and that he published a book entitled Internal Combustion Engine Fundamentals.
`
`Therefore, except as expressly admitted, Ford denies the allegations contained in Paragraph 6 of
`
`the Complaint.
`
`7.
`
`Ford is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations contained in Paragraph 7 of the Complaint. Therefore, Ford denies
`
`the allegations contained in Paragraph 7 of the Complaint.
`
`8.
`
`Ford is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations contained in Paragraph 8 of the Complaint, except Ford is aware that
`
`MIT is aware, on information and belief, that MIT is a non-profit private research and
`
`educational institution with a principal place of business in Cambridge, Massachusetts.
`
`2
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`FORD Ex. 1123, page 2
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`

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`Therefore, except as expressly admitted, Ford denies the allegations contained in Paragraph 8 of
`
`the Complaint.
`
`9.
`
`Ford admits that it is a corporation existing and organized under the laws
`
`of the State of Delaware. Ford also admits that it makes, sells, and offers for sale in the United
`
`States, or imports into the United States, motor vehicles and related motor vehicles components
`
`and accessories. Ford denies that any of its motor vehicles and related motor vehicles
`
`components and accessories infringe any of the patents at issue in the Complaint. Except as
`
`expressly admitted, Ford denies the allegations contained in Paragraph 9 of the Complaint.
`
`Jurisdiction and Venue
`
`10.
`
`Ford admits that subject matter jurisdiction is conferred on this Court
`
`pursuant to 28 U.S.C. §§ 1331 and 1338(a) as this action arises under Title 35 of the United
`
`States Code.
`
`11.
`
`Ford admits that this Court has personal jurisdiction over Ford because
`
`Ford is incorporated in Delaware. Ford admits that it distributes certain motor vehicles and
`
`products in Delaware. Ford denies that it manufactures motor vehicles and other products in
`
`Delaware, and otherwise denies the remaining allegations in Paragraph 11 of the Complaint.
`
`12.
`
`Ford admits that venue is proper in this District under 28 U.S.C.
`
`§ 1400(b).
`
`The Asserted Patents
`
`13.
`
`Ford denies that it has infringed or continues to infringe U.S. Patent
`
`No. 8,069,839 (the “839 Patent”), U.S. Patent No. 9,255,519 (the “519 Patent”), U.S. Patent
`
`No. 9,810,166 (the “166 Patent”), and/or U.S. Patent No. 10,138,826 (the “826 Patent”)
`
`(collectively, the “Asserted Patents”).
`
`3
`
`FORD Ex. 1123, page 3
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`14.
`
`Ford is without knowledge or information sufficient to form a belief as to
`
`the truth of the remaining allegations contained in Paragraph 14 of the Complaint and therefore
`
`denies those allegations.
`
`15.
`
`Ford admits that each of the Asserted Patents lists Dr. Bromberg,
`
`Dr. Cohn, and Professor Heywood as inventors. Ford denies that each of the Asserted Patents
`
`was actually invented by Dr. Bromberg, Dr. Cohn, and Professor Heywood. Ford is without
`
`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
`
`contained in Paragraph 15 of the Complaint and therefore denies those allegations.
`
`16.
`
`17.
`
`18.
`
`Ford denies the allegations contained in Paragraph 16 of the Complaint.
`
`Ford denies the allegations contained in Paragraph 17 of the Complaint.
`
`Ford denies the allegations contained in Paragraph 18 of the Complaint,
`
`except Ford admits that certain patents relating to the Asserted Patents have been cited in patents
`
`filed by Ford and its related entities such as Ford Global Technologies, LLC.
`
`Allegations in the Complaint Concerning the Parties’ Past Relationship and
`Ford’s Alleged Use of Plaintiff’s Technology
`
`19.
`
`20.
`
`21.
`
`Ford denies the allegations contained in Paragraph 19 of the Complaint.
`
`Ford denies the allegations contained in Paragraph 20 of the Complaint.
`
`Ford admits that it had knowledge of the existence of the 839 Patent in
`
`October 2014. Ford denies that any of Plaintiffs’ patents cover the use of dual port and direct
`
`injection, and otherwise denies the remaining allegations in Paragraph 21 of the Complaint.
`
`22.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington and Mr. Bill Coughlin dated October 30, 2014. The content of the October 30, 2014
`
`email speaks for itself. Ford denies the remaining allegations contained in Paragraph 22 of the
`
`Complaint.
`
`4
`
`FORD Ex. 1123, page 4
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`23.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington and Mr. Bill Coughlin dated October 30, 2014. The content of the October 30, 2014
`
`email speaks for itself. Ford denies the remaining allegations contained in Paragraph 23 of the
`
`Complaint.
`
`24.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington and Mr. Bill Coughlin dated October 30, 2014. The content of the October 30, 2014
`
`email speaks for itself. Ford denies the remaining allegations contained in Paragraph 24 of the
`
`Complaint.
`
`25.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington and Mr. Bill Coughlin dated October 30, 2014. The content of the October 30, 2014
`
`email speaks for itself. Ford denies the remaining allegations contained in Paragraph 25 of the
`
`Complaint.
`
`26.
`
`Ford admits that an email exists from Dr. Ken Washington dated
`
`October 31, 2014. The content of the October 31, 2014 email speaks for itself. Ford denies the
`
`remaining allegations contained in Paragraph 26 of the Complaint
`
`27.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington dated December 16, 2014. The content of the December 16, 2014 email speaks for
`
`itself. Ford denies the remaining allegations contained in Paragraph 27 of the Complaint.
`
`28.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington dated December 17, 2014. The content of the December 17, 2014 email speaks for
`
`itself. Ford denies the remaining allegations contained in Paragraph 28 of the Complaint.
`
`5
`
`FORD Ex. 1123, page 5
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`29.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington dated January 23, 2015. The content of the January 23, 2015 email speaks for itself.
`
`Ford denies the remaining allegations contained in Paragraph 29 of the Complaint.
`
`30.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington dated February 13, 2015. The content of the February 13, 2015 email speaks for
`
`itself. Ford denies the remaining allegations contained in Paragraph 30 of the Complaint.
`
`31.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington dated February 13, 2015. The content of the February 13, 2015 email speaks for
`
`itself. Ford denies the remaining allegations contained in Paragraph 31 of the Complaint.
`
`32.
`
`Ford admits that an email exists from Bill Coughlin to Professor Heywood
`
`dated February 15, 2015. The content of the February 15, 2015 email speaks for itself. Ford
`
`denies the remaining allegations contained in Paragraph 32 of the Complaint.
`
`33.
`
`Ford admits that it agreed to meet with EBS on April 17, 2015. Ford also
`
`admits that Dr. Cohn and Dr. Bromberg attended the meeting in person and a person identified as
`
`Professor Heywood participated via phone. Ford is without knowledge or information sufficient
`
`to form a belief as to the truth of the remaining allegations contained in Paragraph 33 of the
`
`Complaint and therefore denies those allegations.
`
`34.
`
`Ford admits that there was a meeting on April 17, 2015, between Ford and
`
`EBS. Ford denies the remaining allegations contained in Paragraph 34 of the Complaint.
`
`35.
`
`Ford admits that there was a meeting on April 17, 2015, between Ford and
`
`EBS. Ford denies the remaining allegations contained in Paragraph 35 of the Complaint.
`
`36.
`
`Ford admits that there was a meeting on April 17, 2015, between Ford and
`
`EBS. Ford denies the remaining allegations contained in Paragraph 36 of the Complaint.
`
`6
`
`FORD Ex. 1123, page 6
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`37.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington dated June 5, 2015. The content of the June 5, 2015 email speaks for itself. Ford
`
`denies the remaining allegations contained in Paragraph 37 of the Complaint.
`
`38.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington dated July 6, 2015. The content of the July 6, 2015 email speaks for itself. Ford
`
`denies the remaining allegations contained in Paragraph 38 of the Complaint.
`
`39.
`
`Ford admits that an email exists from Professor Heywood to Dr. Ken
`
`Washington dated July 29, 2015. The content of the July 29, 2015 email speaks for itself. Ford
`
`denies the remaining allegations contained in Paragraph 39 of the Complaint.
`
`40.
`
`Ford admits that an email exists from Greg Brown to Professor Heywood
`
`dated August 3, 2015, and that Greg Brown at that time was Global Engine Intellectual Property
`
`Counsel at Ford Global Technologies, LLC. The content of the August 3, 2015 email speaks for
`
`itself. Ford denies the remaining allegations contained in Paragraph 40 of the Complaint.
`
`41.
`
`Ford admits that an email exists from Professor Heywood to Greg Brown
`
`dated October 12, 2015. The content of the October 12, 2015 email speaks for itself. Ford
`
`denies the remaining allegations contained in Paragraph 41 of the Complaint.
`
`42.
`
`Ford admits that an email exists from Greg Brown to Professor Heywood
`
`dated October 12, 2015. The content of the October 12, 2015 email speaks for itself. Ford
`
`denies the remaining allegations contained in Paragraph 42 of the Complaint.
`
`43.
`
`44.
`
`45.
`
`Ford denies the allegations contained in Paragraph 43 of the Complaint.
`
`Ford denies the allegations contained in Paragraph 44 of the Complaint.
`
`Ford admits that there is a Forbes article dated May 3, 2016 entitled “Ford
`
`Refreshes Its Original EcoBoost V6 and Makes The Jump To 10 Speeds For 2017 F-150 and
`
`7
`
`FORD Ex. 1123, page 7
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`Raptor.” The article speaks for itself. Ford denies the remaining allegations contained in
`
`Paragraph 45 of the Complaint.
`
`46.
`
`Ford admits that there is a Forbes article dated May 3, 2016 entitled “Ford
`
`Refreshes Its Original EcoBoost V6 and Makes The Jump To 10 Speeds For 2017 F-150 and
`
`Raptor.” The article speaks for itself. Ford denies the remaining allegations contained in
`
`Paragraph 46 of the Complaint.
`
`47.
`
`Ford admits that there is a Motor Trend article dated July 11, 2016 entitled
`
`“2017 Ford F-150 EcoBoost Has 470 Lb-Ft of Torque from New Engine.” The article speaks for
`
`itself. Ford denies the remaining allegations contained in Paragraph 47 of the Complaint.
`
`48.
`
`Ford admits that it issued a press release on June 16, 2017 entitled “Ford
`
`F-150 and Expedition’s New Advanced Engines Maximize Lightweight Materials for Greater
`
`Performance, Efficiency.” The press release speaks for itself. Ford denies the remaining
`
`allegations contained in Paragraph 48 of the Complaint.
`
`49.
`
`Ford is without knowledge or information sufficient to form a belief as to
`
`the truth of the allegations contained in Paragraph 49 of the Complaint and therefore denies those
`
`allegations.
`
`Allegations in the Complaint Concerning
`Ford’s Touted Benefits of the Allegedly Infringing Technology
`
`50.
`
`Ford admits that it issued a press release on June 16, 2017 entitled “Ford
`
`F-150 and Expedition’s New Advanced Engines Maximize Lightweight Materials for Greater
`
`Performance, Efficiency.” The press release speaks for itself. Ford denies the remaining
`
`allegations contained in Paragraph 50 of the Complaint.
`
`51.
`
`Ford admits that articles quoting Mr. Hau Thai-Tang exist, and that
`
`Mr. Hau Thai-Tang was Ford’s Executive Vice President of Product Development and
`
`8
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`FORD Ex. 1123, page 8
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`Purchasing. Those articles speak for themselves. Except as expressly admitted, Ford denies the
`
`allegations contained in Paragraph 51 of the Complaint.
`
`52.
`
`Ford admits that it has issued marketing materials regarding its 5.0L V8
`
`engine. Those marketing materials speak for themselves. Ford denies the remaining allegations
`
`contained in Paragraph 52 of the Complaint.
`
`53.
`
`Ford admits that it has issued marketing brochures for its vehicles. Those
`
`marketing brochures speak for themselves. Ford denies that the vehicles and engines use
`
`infringing technology and except as expressly admitted denies the allegations contained in
`
`Paragraph 53 of the Complaint.
`
`54.
`
`Ford admits that it issued a 2017 brochure for its F-150 trucks. The 2017
`
`brochure speaks for itself. Except as expressly admitted, Ford denies the allegations contained in
`
`Paragraph 54 of the Complaint.
`
`55.
`
`Ford admits that it issued a 2018 brochure for its F-150 trucks. The 2018
`
`brochure speaks for itself. Except as expressly admitted, Ford denies the allegations contained in
`
`Paragraph 55 of the Complaint.
`
`56.
`
`Ford admits that it issued a 2018 brochure. The 2018 brochure speaks for
`
`itself. Ford denies the remaining allegations contained in Paragraph 56 of the Complaint.
`
`57.
`
`Ford admits that it issued a 2018 brochure for the Ford Expedition. The
`
`2018 brochure speaks for itself. Except as expressly admitted, Ford denies the allegations
`
`contained in Paragraph 57 of the Complaint.
`
`58.
`
`Ford denies the allegations contained in Paragraph 58 of the Complaint
`
`and specifically denies that any of its products infringe.
`
`59.
`
`Ford denies the allegations contained in Paragraph 59 of the Complaint.
`
`9
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`FORD Ex. 1123, page 9
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`60.
`
`Ford admits that it issued a Form 8-K report to the Securities and
`
`Exchange Commission dated January 3, 2019. The Form 8-K report speaks for itself. Ford
`
`denies the remaining allegations contained in Paragraph 60 of the Complaint.
`
`Asserted First Claim for Relief
`Alleged Infringement of the 839 Patent
`
`61.
`
`Ford repeats and incorporates its responses to the allegations of the
`
`preceding paragraphs.
`
`62.
`
`Ford admits that the 839 Patent bears an issue date of December 6, 2011,
`
`but denies that the 839 Patent was duly and legally issued. Ford admits that Exhibit A of the
`
`Complaint purports to be a copy of the 839 Patent. Ford is without knowledge or information
`
`sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 62
`
`of the Complaint and therefore denies those allegations.
`
`63.
`
`64.
`
`65.
`
`Ford denies the allegations contained in Paragraph 63 of the Complaint.
`
`Ford denies the allegations contained in Paragraph 64 of the Complaint.
`
`Ford admits that the 839 Patent recites claims 1 and 2. Ford denies the
`
`remaining allegations contained in Paragraph 65 of the Complaint.
`
`66.
`
`67.
`
`Ford denies the allegations contained in Paragraph 66 of the Complaint.
`
`Ford admits that the https://www.ford.com/trucks/f150/features/power/
`
`web page exists. The web page speaks for itself. Ford denies the remaining allegations
`
`contained in Paragraph 67 of the Complaint.
`
`68.
`
`Ford admits that there exists a July 2018 report issued by the National
`
`Highway Traffic Safety Administration. The report speaks for itself. Ford denies the remaining
`
`allegations contained in Paragraph 68 of the Complaint.
`
`69.
`
`Ford denies the allegations contained in Paragraph 69 of the Complaint.
`
`10
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`FORD Ex. 1123, page 10
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`70.
`
`Ford denies the allegations contained in Paragraph 70 of the Complaint,
`
`except Ford admits that the Ford F-150 is equipped with “three way” catalytic convertors.
`
`71.
`
`Ford denies the allegations contained in Paragraph 71 of the Complaint.
`
`Asserted Second Claim for Relief
`Alleged Infringement of the 519 Patent
`
`72.
`
`Ford repeats and incorporates its responses to the allegations of the
`
`preceding paragraphs.
`
`73.
`
`Ford admits that the 519 Patent bears an issue date of February 9, 2016,
`
`but denies that the 519 Patent was duly and legally issued. Ford admits that Exhibit B of the
`
`Complaint purports to be a copy of the 519 Patent. Ford is without knowledge or information
`
`sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 73
`
`of the Complaint and therefore denies those allegations.
`
`74.
`
`75.
`
`76.
`
`Ford denies the allegations contained in Paragraph 74 of the Complaint.
`
`Ford denies the allegations contained in Paragraph 75 of the Complaint.
`
`Ford admits that the 519 Patent recites claim 1. Ford denies the remaining
`
`allegations in Paragraph 76 of the Complaint.
`
`77.
`
`78.
`
`Ford denies the allegations contained in Paragraph 77 of the Complaint.
`
`Ford admits that the https://www.ford.com/trucks/f150/features/power/
`
`web page exists. The web page speaks for itself. Ford denies the remaining allegations
`
`contained in Paragraph 78 of the Complaint.
`
`79.
`
`80.
`
`Ford denies the allegations contained in Paragraph 79 of the Complaint.
`
`Ford admits that there exists a July 2018 report issued by the National
`
`Highway Traffic Safety Administration. The report speaks for itself. Ford denies the remaining
`
`allegations contained in Paragraph 80 of the Complaint.
`
`11
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`FORD Ex. 1123, page 11
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`81.
`
`Ford admits that there exists a July 2018 report issued by the National
`
`Highway Traffic Safety Administration. The report speaks for itself. Ford denies the remaining
`
`allegations contained in Paragraph 81 of the Complaint.
`
`82.
`
`83.
`
`Ford denies the allegations contained in Paragraph 82 of the Complaint.
`
`Ford denies the allegations contained in Paragraph 83 of the Complaint.
`
`Asserted Third Claim for Relief
`Alleged Infringement of the 166 Patent
`
`84.
`
`Ford repeats and incorporates its responses to the allegations of the
`
`preceding paragraphs.
`
`85.
`
`Ford admits that the 166 Patent bears an issue date of November 7, 2017,
`
`but denies that the 166 Patent was duly and legally issued. Ford admits that Exhibit C of the
`
`Complaint purports to be a copy of the 166 Patent. Ford is without knowledge or information
`
`sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 85
`
`of the Complaint and therefore denies those allegations.
`
`86.
`
`87.
`
`88.
`
`Ford denies the allegations contained in Paragraph 86 of the Complaint.
`
`Ford denies the allegations contained in Paragraph 87 of the Complaint.
`
`Ford admits that the 166 Patent recites claim 19. Ford denies the
`
`remaining allegations contained in Paragraph 88 of the Complaint.
`
`89.
`
`90.
`
`Ford denies the allegations contained in Paragraph 89 of the Complaint.
`
`Ford admits that the https://www.ford.com/trucks/f150/features/power/
`
`web page exists. The web page speaks for itself. Ford denies the remaining allegations
`
`contained in Paragraph 90 of the Complaint.
`
`12
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`FORD Ex. 1123, page 12
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`91.
`
`Ford admits that there exists a July 2018 report issued by the National
`
`Highway Traffic Safety Administration. The report speaks for itself. Ford denies the remaining
`
`allegations contained in Paragraph 91 of the Complaint.
`
`92.
`
`Ford admits that there exists a July 2018 report issued by the National
`
`Highway Traffic Safety Administration. The report speaks for itself. Ford denies the remaining
`
`allegations contained in Paragraph 92 of the Complaint.
`
`93.
`
`Ford admits that there exists a July 2018 report issued by the National
`
`Highway Traffic Safety Administration. The report speaks for itself. Ford denies the remaining
`
`allegations contained in Paragraph 93 of the Complaint.
`
`94.
`
`Ford denies the allegations contained in Paragraph 94 of the Complaint.
`
`Asserted Fourth Claim for Relief
`Alleged Infringement of the 826 Patent
`
`95.
`
`Ford repeats and incorporates its responses to the allegations of the
`
`preceding paragraphs.
`
`96.
`
`Ford admits that the 826 Patent bears an issue date of November 27, 2018,
`
`but denies that the 826 Patent was duly and legally issued. Ford admits that Exhibit D of the
`
`Complaint purports to be a copy of the 826 Patent. Ford is without knowledge or information
`
`sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 96
`
`of the Complaint and therefore denies those allegations.
`
`97.
`
`98.
`
`99.
`
`Ford denies the allegations contained in Paragraph 97 of the Complaint.
`
`Ford denies the allegations contained in Paragraph 98 of the Complaint.
`
`Ford admits that the 826 Patent recites claim 12. Ford denies the
`
`remaining allegations contained in Paragraph 99 of the Complaint.
`
`100. Ford denies the allegations contained in Paragraph 100 of the Complaint.
`
`13
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`FORD Ex. 1123, page 13
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`101. Ford admits that the https://www.ford.com/trucks/f150/features/power/
`
`web page exists. The web page speaks for itself. Ford denies the remaining allegations
`
`contained in Paragraph 100 of the Complaint.
`
`102. Ford admits that there exists a July 2018 report issued by the National
`
`Highway Traffic Safety Administration. The report speaks for itself. Ford denies the remaining
`
`allegations contained in Paragraph 102 of the Complaint.
`
`103. Ford admits that there exists a July 2018 report issued by the National
`
`Highway Traffic Safety Administration. The report speaks for itself. Ford denies the remaining
`
`allegations contained in Paragraph 103 of the Complaint.
`
`104. Ford admits that there exists a July 2018 report issued by the National
`
`Highway Traffic Safety Administration. The report speaks for itself. Ford denies the remaining
`
`allegations contained in Paragraph 104 of the Complaint.
`
`105. Ford denies the allegations contained in Paragraph 105 of the Complaint.
`
`106. Ford denies the allegations contained in Paragraph 106 of the Complaint.
`
`Willful Infringement
`
`107. Ford repeats and incorporates its responses to the allegations of the
`
`preceding paragraphs.
`
`108. Ford denies the allegations contained in Paragraph 108 of the Complaint.
`
`109. Ford admits that it has had knowledge of the 839 Patent since October 30,
`
`2014. Except as expressly admitted, Ford denies the allegations contained in Paragraph 109 of
`
`the Complaint.
`
`14
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`FORD Ex. 1123, page 14
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`110. Ford denies the allegations contained in Paragraph 110 of the Complaint,
`
`except Ford admits that Mr. Coughlin was Ford’s chief intellectual property officer as of
`
`April 17, 2005, and that Mr. Coughlin and Dr. Cohn met on that date.
`
`111. Ford denies the allegations contained in Paragraph 111 of the Complaint.
`
`112. Ford admits that there exists an email dated October 12, 2015. The email
`
`speaks for itself. Ford denies the remaining allegations contained in Paragraph 112 of the
`
`Complaint.
`
`113. Ford admits that there is a Forbes article dated May 3, 2016 entitled “Ford
`
`Refreshes Its Original EcoBoost V6 and Makes The Jump To 10 Speeds For 2017 F-150 and
`
`Raptor.” The article speaks for itself. Ford denies the remaining allegations contained in
`
`Paragraph 113 of the Complaint.
`
`114. Ford denies the allegations contained in Paragraph 114 of the Complaint.
`
`115. Ford admits that it has had knowledge of the 839, 519, 166, and 826
`
`Patents since on or shortly after the filing date of the Complaint but denies that filing of the
`
`Complaint constitutes legally cognizable notice for any purpose under the Patent Act, including
`
`any alleged willful infringement. Except as expressly admitted, Ford denies the allegations
`
`contained in Paragraph 115 of the Complaint.
`
`Prayer for Relief
`
`Ford denies that Plaintiffs are entitled to any of the relief prayed for in the
`
`Complaint.
`
`15
`
`FORD Ex. 1123, page 15
` IPR2020-00013
`
`

`

`General Denial
`
`Except as expressly admitted herein, Ford denies each and every allegation
`
`contained in the Complaint.
`
`DEFENSES
`
`Pursuant to Federal Rules of Civil Procedure 8(b) and (c), without assuming any
`
`burden that it would not otherwise bear, without reducing or removing Plaintiffs’ burdens of
`
`proof on its affirmative claims against Ford, without waiving its right to assert additional
`
`defenses, and solely to the extent deemed necessary by the Court to maintain any or all of the
`
`following defenses, Ford asserts the following defenses to the Complaint:
`
`First Defense
`(Non-Infringement)
`
`116. Ford does not infringe and has not infringed any valid and enforceable
`
`claim of the 839, 519, 166, and 826 Patents literally, under the doctrine of equivalents, directly,
`
`indirectly, contributorily, by way of inducement, and/or via any other mechanism of liability
`
`under the Patent Act.
`
`Second Defense
`(Invalidity)
`
`117. Each of the claims of the 839, 519, 166, and 826 Patents is invalid and/or
`
`unenforceable for failure to comply with one or more of the conditions of patentability set forth
`
`in Part II of Title 35 of the United States Code, including, for example, §§ 102, 103, and 112.
`
`16
`
`FORD Ex. 1123, page 16
` IPR2020-00013
`
`

`

`Third Defense
`(Prosecution History Estoppel and Disclaimer)
`
`118. By reason of the proceedings in the U.S. Patent and Trademark Office
`
`during the prosecution of the applications that resulted in the issuance of the 839, 519, 166, and
`
`826 Patents, Plaintiffs are estopped from claiming infringement by Ford of one or more claims of
`
`the 839, 519, 166, and 826 Patents.
`
`Fourth Defense
`(Inequitable Conduct)
`
`119. The 839, 519, 166, and 826 Patents are unenforceable pursuant to the
`
`doctrine of inequitable conduct, for at least the following reasons.
`
`Inequitable Conduct Based On Failure To Disclose U.S. Patent No. 6,651,432
`
`120. On information and belief, the Asserted Patents are unenforceable due to
`
`the named inventors’ and/or their patent attorneys’ inequitable conduct during the prosecution of
`
`the applications that led to the Asserted Patents. The named inventors, as well as their patent
`
`attorneys, owed a duty of candor to the USPTO to disclose all non-cumulative material
`
`information, including references and office actions from related applications. Larson Mfg. v.
`
`Aluminart Prods., 559 F.3d 1317, 1320 (Fed. Cir. 2009). On information and belief, the named
`
`inventors and/or their patent attorneys violated this duty of candor by withholding or omitting
`
`from disclosure to the patent examiner and the USPTO material information with deliberate
`
`intent to deceive the USPTO into issuing the claims of the Asserted Patents.
`
`121. The inventors and their patent attorneys failed to disclose U.S. Patent
`
`No. 6,651,432 (“Gray”) during the prosecution of each of the Asserted Patents.
`
`122. The inventors and their patent attorneys were aware of Gray at least since
`
`at least May 13, 2010. The inventors and their patent attorneys filed U.S. Patent Application
`
`17
`
`FORD Ex. 1123, page 17
` IPR2020-00013
`
`

`

`No. 11758157 (the “157 Application”) on June 5, 2007. The 157 Application is related to the
`
`applications from which the Asserted Patents issued by virtue of the 033 Patent. The Examiner
`
`for the 157 Application was Examiner Hung K. Nyugen.
`
`123. During prosecution of the 157 Application, the Examiner rejected certain
`
`pending claims of the 157 Application as anticipated by Gray in a May 13, 2010 Office Action.
`
`124. On June 18, 2010, the Applicant filed an Amendment and Remarks. In the
`
`remarks, the Applicant argued that “In all of [the embodiments disclosed in Grey] only a single
`
`fuel is used rather than varying mixtures of a primary fuel and a directly injected antiknock
`
`agent.” For example, the Applicant stated that the second embodiment of Gray discloses “high
`
`octane and low cetane fuel such as a conventional gasoline is used in an autoignition mode.” In
`
`other words, Gray discloses the use gasoline as a single fuel source.
`
`125. Further, Gray discloses both direct injection and port injection.
`
`126. The claims of the Asserted Patents allegedly cover using a single fuel and
`
`relate to using direct injection and port injection. Thus, Gray is material to the claims of the
`
`Asserted Patents.
`
`127. Despite being aware of the materiality of Gray to the claims in the
`
`Asserted Patents, the inventors and their patent attorneys did not disclose the reference in the
`
`applications resulted in the Asserted Patents, even though the claims allegedly cover a single fuel
`
`system.
`
`Inequitable Conduct Based On Failure To Disclose October 9, 2013
`Office Action From 220 Application
`
`128. The Asserted Patents are
`
`related
`
`to U.S. Patent Application
`
`No. 13/546,220 (the “220 Application”), now abandoned, by virtue of priority to U.S. Patent
`
`No. 7,314,033. The 220 Application is entitled “Optimized Fuel Management System For Direct
`
`18
`
`FORD Ex. 1123, page 18
` IPR2020-00013
`
`

`

`Injection Ethanol Enhancement Of Gasoline Engines” and relates to the same subject matter as
`
`the 839, 519, 166, and 826 Patents.
`
`129. The 220 Application was examined by Examiner Long T. Tran from the
`
`USPTO. The 220 Application had a different Examiner than the 839, 519, 166, and 826 Patents,
`
`which were all examined by Hai Huynh.
`
`130. On October 9, 2013, claims 6 and 8-30 of the 220 Application were
`
`rejected under 35 U.S.C. § 112(b) as being incomplete for omitting essential elements, including
`
`the structural container for holding the fuel, sensors for measuring engine load and torque, and a
`
`controller for the sensors.
`
`131. For example, then-pending claim 6 recited: “A spark ignition engine
`
`where two fue

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