`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`ETHANOL BOOSTING SYSTEMS, LLC,
`and MASSACHUSETTS INSTITUTE OF
`TECHNOLOGY
`
`
`
`Plaintiffs,
`
`
`
`Civil Action No. 19-cv-196-CFC
`
`JURY TRIAL DEMANDED
`
`
`
`v.
`
`FORD MOTOR COMPANY
`
`
`
`
`
`
`
`Defendant.
`
`ANSWER TO DEFENDANT’S COUNTERCLAIMS
`
`Ethanol Boosting Systems, LLC (“EBS”) and the Massachusetts Institute of Technology
`
`(“MIT”) (collectively, “Plaintiffs”) submit the following Answer to the Counterclaims asserted
`
`by Ford Motor Company (“Ford” or “Defendant”):
`
`THE PARTIES
`
`1.
`
`Plaintiffs admit that Ford is a corporation organized under the laws of the State of
`
`Delaware and that Ford has alleged that its principal place of business is at One American Road,
`
`Dearborn, Michigan. Plaintiffs deny the remaining allegations in this paragraph.
`
`2.
`
`Plaintiffs admit that EBS is a limited liability company organized under the laws
`
`of the State of Delaware with its principal place of business in Cambridge, Massachusetts.
`
`Plaintiffs deny the remaining allegations in this paragraph.
`
`3.
`
`Admitted.
`
`JURISDICTION AND VENUE
`
`4.
`
`Plaintiffs admit that the Court has subject matter jurisdiction over Defendant’s
`
`Counterclaims to the extent they arise under 28 U.S.C. §§ 1331 and 1338. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`1
`
`FORD Ex. 1124, page 1
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`

`

`
`
`5.
`
`Plaintiffs admit that this Court has personal jurisdiction over them to the extent
`
`that the asserted Counterclaims relate to the allegations in Plaintiffs’ Complaint. Plaintiffs deny
`
`the remaining allegations in this paragraph.
`
`6.
`
`Admitted.
`
`BACKGROUND OF THE ASSERTED PATENTS
`
`7.
`
`Plaintiffs admit that EBS was incorporated in March 2005 and that it is the
`
`exclusive licensee of United States Patent No. 8,069,839; United States Patent No. 9,255,519;
`
`United States Patent No. 9,810,166; and United States Patent No. 10,138,826, which, for
`
`purposes of responding to Ford’s allegations, Plaintiffs understand to be the “Asserted Patents.”
`
`Plaintiffs deny the remaining allegations in this paragraph.
`
`8.
`
`Plaintiffs admit that each of the Asserted Patents claims priority to and is a
`
`continuation of at least U.S. Patent Application No. 10/991,774, which was filed on November
`
`18, 2004, and ultimately issued as U.S. Patent No. 7,314,033. Plaintiffs deny the remaining
`
`allegations in this paragraph.
`
`9.
`
`Plaintiffs admit that Leslie Bromberg, Daniel Cohn, and John Heywood—whom,
`
`for the purposes of responding to Ford’s allegations, Plaintiffs understand to be the
`
`“inventors”—through their patent attorneys, filed U.S. Patent Application No. 11/758,157 on
`
`June 5, 2007, and that it was a continuation in part of U.S. Patent Application No. 10/991,774,
`
`which ultimately issued as U.S. Patent No. 7,314,033. Plaintiffs deny the remaining allegations
`
`in this paragraph.
`
`10.
`
`Plaintiffs admit that on May 13, 2010, the Patent Examiner issued a Non-Final
`
`Rejection of Claims 31-67 of U.S. Patent Application No. 11/758,157 under 35 U.S.C. § 102(b)
`
`2
`
`FORD Ex. 1124, page 2
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`

`

`
`
`as being anticipated by Gray, Jr. (US 6,651,432 B1). Plaintiffs deny the remaining allegations in
`
`this paragraph.
`
`11.
`
`Plaintiffs admit that on June 18, 2018, the Applicant filed an Amendment and
`
`Remarks, the contents of which speak for themselves, and that U.S. Patent No. 6,651,432—
`
`which, for purposes of responding to Ford’s allegations, Plaintiffs understand to be “Gray”—
`
`recites the use of direct and port injection. Plaintiffs deny the remaining allegations in this
`
`paragraph.
`
`12.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed U.S. Patent
`
`No. 6,651,432 during the prosecution of the applications that ultimately issued as the Asserted
`
`Patents. Plaintiffs otherwise lack knowledge or information sufficient to form a belief about the
`
`truth of this allegation and therefore deny it.
`
`13.
`
`Plaintiffs admit that U.S. Patent Application No. 11/546,220 was filed on July 11,
`
`2012 and was a continuation in part of U.S. Patent Application No. 10/991,774, which ultimately
`
`issued as U.S. Patent No. 7,314,033. Plaintiffs deny the remaining allegations in this paragraph.
`
`14.
`
`Plaintiffs admit that on October 9, 2013, the Patent Examiner issued a Final
`
`Rejection of Claims 6, 8-30 of U.S. Patent Application No. 11/546,220 under 35 U.S.C. § 112(b)
`
`or 35 U.S.C. § 112 (Pre-AIA), ¶ 2, which speaks for itself. Plaintiffs deny the remaining
`
`allegations in this paragraph.
`
`15.
`
`16.
`
`Denied.
`
`Plaintiffs admit that on May 20, 2014, the United States Patent and Trademark
`
`Office issued a notice of abandonment for U.S. Patent Application No. 11/546,220. Plaintiffs
`
`deny the remaining allegations in this paragraph.
`
`17.
`
`Admitted.
`
`3
`
`FORD Ex. 1124, page 3
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`
`
`18.
`
`Plaintiffs admit that U.S. Patent Application No. 15/463,100 was a continuation
`
`of U.S. Patent Application No. 10/991,774, which ultimately issued as U.S. Patent No.
`
`7,314,033, and other applications. Plaintiffs deny the remaining allegations in this paragraph.
`
`19.
`
`Plaintiffs admit that on November 13, 2017, the Patent Examiner issued a Non-
`
`Final Rejection of Claims 32-67 of U.S. Patent Application 15/463,100 under 35 U.S.C. § 112(b)
`
`or 35 U.S.C. § 112 (Pre-AIA), ¶ 1, which speaks for itself. Plaintiffs deny the remaining
`
`allegations in this paragraph.
`
`20.
`
`Plaintiffs admit that on May 18, 2018, the United States Patent and Trademark
`
`Office issued a notice of abandonment for U.S. Patent Application No. 15/463,100. Plaintiffs
`
`deny the remaining allegations in this paragraph.
`
`21.
`
`Plaintiffs admit that during prosecution of the Asserted Patents the inventors and
`
`their patent attorneys—whom, for purposes of responding to Ford’s allegations, Plaintiffs
`
`understand to be “the Applicant”—disclosed Office Actions to the United States Patent and
`
`Trademark Office. Plaintiffs deny the remaining allegations in this paragraph.
`
`22.
`
`23.
`
`Denied.
`
`Denied.
`
`RELATIONSHIP BETWEEN FORD AND MIT AND EBS
`
`24.
`
`Plaintiffs admit that the statement “Ford Motor Company has been an innovator
`
`since it introduced the Model A in 1903” appears on the website for the Ford-MIT Alliance.
`
`25.
`
`Plaintiffs admit that MIT and Ford established a Ford-MIT Alliance and that Ford
`
`has sponsored research conducted at MIT. Plaintiffs lack knowledge or information sufficient to
`
`form a belief about the truth of the remaining allegations in this paragraph, and therefore deny
`
`them.
`
`4
`
`FORD Ex. 1124, page 4
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`

`
`
`26.
`
`Plaintiffs admit that the Ford-MIT Alliance began in 1998, that MIT has stated
`
`that it is MIT’s longest running industry alliance, and that Ford has contributed funds for
`
`research purposes. Plaintiffs deny the remaining allegations in this paragraph.
`
`27.
`
`Plaintiffs admit that MIT has stated that the Ford-MIT Alliance has funded more
`
`than 150 projects. Plaintiffs deny the remaining allegations in this paragraph.
`
`28.
`
`Plaintiffs admit that EBS was incorporated in March 2005 and that it is the
`
`exclusive licensee of the Asserted Patents. Plaintiffs deny the remaining allegations in this
`
`paragraph.
`
`29.
`
`30.
`
`Admitted.
`
`Plaintiffs admit that MIT owns each of the Asserted Patents, that members of
`
`Ford and MIT occasionally met to discuss issues related to the Ford-MIT Alliance, that a
`
`meeting among representatives from Ford and MIT occurred on March 30, 2015, and that this
`
`meeting occurred after Professor John Heywood’s October 30, 2014 email to Ford. Plaintiffs
`
`deny the remaining allegations in this paragraph.
`
`31.
`
`Plaintiffs admit that on March 30, 2015, a meeting occurred that included Maria
`
`Zuber, then and now the Vice President of Research at MIT, Ken Washington, and Ed Krause.
`
`Plaintiffs deny the remaining allegations in this paragraph.
`
`32.
`
`33.
`
`Denied.
`
`Plaintiffs admit that Professor Heywood corresponded with Ford after March 30,
`
`2015. Plaintiffs deny the remaining allegations in this paragraph.
`
`34.
`
`35.
`
`36.
`
`Admitted.
`
`Admitted.
`
`Denied.
`
`5
`
`FORD Ex. 1124, page 5
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`

`

`
`
`Denied.
`
`Admitted.
`
`Denied.
`
`FIRST COUNTERCLAIM
`(Declaratory Judgment of Estoppel)
`
`Plaintiffs incorporate by reference their responses in the preceding paragraphs.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Denied.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`37.
`
`38.
`
`39.
`
`40.
`
`41.
`
`42.
`
`43.
`
`44.
`
`45.
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`46.
`
`47.
`
`48.
`
`49.
`
`50.
`
`
`
`Denied.
`
`Denied.
`
`SECOND COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement of the 839 Patent)
`
`Plaintiffs incorporate by reference their responses in the preceding paragraphs.
`
`Denied.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`6
`
`FORD Ex. 1124, page 6
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`

`
`
`51.
`
`Denied.
`
`THIRD COUNTERCLAIM
`(Declaratory Judgment of Invalidity of the 839 Patent)
`
`Plaintiffs incorporate by reference their responses in the preceding paragraphs.
`
`Denied.
`
`Denied.
`
`Denied.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`
`
`52.
`
`53.
`
`54.
`
`55.
`
`56.
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`57.
`
`Denied.
`
`FOURTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the 839 Patent)
`
`58.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`59.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`extent a response is required, Plaintiffs admit that “Ford seeks a declaration that the claims of the
`
`839 Patent are unenforceable” and that a duty of candor is owed to the United States Patent and
`
`Trademark Office. Plaintiffs deny the remaining allegations in this paragraph.
`
`7
`
`FORD Ex. 1124, page 7
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`

`
`
`60.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed U.S. Patent
`
`No. 6,651,432 during the prosecution of the application that ultimately issued as United States
`
`Patent No. 8,069,839. Plaintiffs deny the remaining allegations in this paragraph.
`
`61.
`
`Plaintiffs admit that the inventors, through their patent attorneys, filed U.S. Patent
`
`Application No. 11/758,157 on June 5, 2007, and that it was a continuation in part of U.S. Patent
`
`Application No. 10/991,774, which ultimately issued as U.S. Patent No. 7,314,033. Plaintiffs
`
`further admit that the Patent Examiner issued a Non-Final Rejection of Claims 31-67 of U.S.
`
`Patent Application No. 11/758,157 under 35 U.S.C. § 102(b) as being anticipated by Gray, Jr.
`
`(US 6,651,432 B1) on May 13, 2010. Plaintiffs deny the remaining allegations in this paragraph.
`
`62.
`
`Plaintiffs admit that the Patent Examiner issued a Non-Final Rejection of Claims
`
`31-67 of U.S. Patent Application No. 11/758,157 under 35 U.S.C. § 102(b) as being anticipated
`
`by Gray, Jr. (US 6,651,432 B1) on May 13, 2010. Plaintiffs deny the remaining allegations in
`
`this paragraph.
`
`63.
`
`Plaintiffs admit that on June 18, 2018, the Applicant filed an Amendment and
`
`Remarks, the contents of which speak for themselves. Plaintiffs deny the remaining allegations
`
`in this paragraph.
`
`64.
`
`Plaintiffs admit that Gray recites the use of direct and port injection. Plaintiffs
`
`deny the remaining allegations in this paragraph.
`
`65.
`
`Plaintiffs admit that certain claims of U.S. Patent No. 8,069,839 recite the use of
`
`both direct and port fuel injection. Plaintiffs deny the remaining allegations in this paragraph.
`
`66.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed U.S. Patent
`
`No. 6,651,432 during the prosecution of the application that ultimately issued as United States
`
`Patent No. 8,069,839. Plaintiffs deny the remaining allegations in this paragraph.
`
`8
`
`FORD Ex. 1124, page 8
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`

`

`
`
`FIFTH COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement of the 519 Patent)
`
`Plaintiffs incorporate by reference their responses in the preceding paragraphs.
`
`Denied.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`67.
`
`68.
`
`69.
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`70.
`
`Denied.
`
`SIXTH COUNTERCLAIM
`(Declaratory Judgment of Invalidity of the 519 Patent)
`
`Plaintiffs incorporate by reference their responses in the preceding paragraphs.
`
`Denied.
`
`Denied.
`
`Denied.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`
`
`71.
`
`72.
`
`73.
`
`74.
`
`75.
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`76.
`
`Denied.
`
`SEVENTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the 519 Patent)
`
`77.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`9
`
`FORD Ex. 1124, page 9
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`

`

`
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`78.
`
`Plaintiffs admit that Ford “seeks a declaration that the claims of the 519 Patent are
`
`unenforceable” and that a duty of candor is owed to the United States Patent and Trademark
`
`Office. Plaintiffs deny the remaining allegations in this paragraph.
`
`79.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed U.S. Patent
`
`No. 6,651,432 during the prosecution of the application that ultimately issued as United States
`
`Patent No. 9,255,519. Plaintiffs deny the remaining allegations in this paragraph.
`
`80.
`
`Plaintiffs admit that the inventors, through their patent attorneys, filed U.S. Patent
`
`Application No. 11/758,157 on June 5, 2007, and that it was a continuation in part of U.S. Patent
`
`Application No. 10/991,774, which ultimately issued as U.S. Patent No. 7,314,033. Plaintiffs
`
`further admit that the Patent Examiner issued a Non-Final Rejection of Claims 31-67 of U.S.
`
`Patent Application No. 11/758,157 under 35 U.S.C. § 102(b) as being anticipated by Gray, Jr.
`
`(US 6,651,432 B1) on May 13, 2010. Plaintiffs deny the remaining allegations in this paragraph.
`
`81.
`
`Plaintiffs admit that the Patent Examiner issued a Non-Final Rejection of Claims
`
`31-67 of U.S. Patent Application No. 11/758,157 under 35 U.S.C. § 102(b) as being anticipated
`
`by Gray, Jr. (US 6,651,432 B1) on May 13, 2010. Plaintiffs deny the remaining allegations in
`
`this paragraph.
`
`82.
`
`Plaintiffs admit that on June 18, 2018, the Applicant filed an Amendment and
`
`Remarks, the contents of which speak for themselves. Plaintiffs deny the remaining allegations
`
`in this paragraph.
`
`83.
`
`Plaintiffs admit that Gray recites the use of direct and port injection. Plaintiffs
`
`deny the remaining allegations in this paragraph.
`
`10
`
`FORD Ex. 1124, page 10
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`

`
`
`84.
`
`Plaintiffs admit that the claims in the Asserted Patents protect intellectual
`
`property rights related to, for example, dual port and direct injection technology in gasoline
`
`internal combustion engines. Plaintiffs deny the remaining allegations in this paragraph.
`
`85.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed U.S. Patent
`
`No. 6,651,432 during the prosecution of the application that ultimately issued as United States
`
`Patent No. 9,255,519. Plaintiffs deny the remaining allegations in this paragraph.
`
`86.
`
`Plaintiffs admit that U.S. Patent Application No. 13/546,220, for which the United
`
`States Patent and Trademark Office issued a notice of abandonment, was titled “Optimized Fuel
`
`Management System for Direct Injection Ethanol Enhancement of Gasoline Engines” and was a
`
`continuation in part of U.S. Patent Application No. 10/991,774, which ultimately issued as U.S.
`
`Patent No. 7,314,033. Plaintiffs deny the remaining allegations in this paragraph.
`
`87.
`
`Plaintiffs admit that on October 9, 2013, the Patent Examiner issued a Final
`
`Rejection of Claims 6, 8-30 of U.S. Patent Application No. 11/546,220 under 35 U.S.C. § 112(b)
`
`or 35 U.S.C. § 112 (Pre-AIA), ¶ 2, which speaks for itself. Plaintiffs deny the remaining
`
`allegations in this paragraph.
`
`88.
`
`89.
`
`Denied.
`
`Plaintiffs admit that at least Claim 1 of Patent No. 9,255,519 recites “[a] fuel
`
`management system for a turbocharged or supercharged spark ignition engine where the fuel
`
`management system controls fueling from a first fueling system that directly injects fuel into at
`
`least one cylinder as a liquid and increases knock suppression by vaporization cooling and from
`
`a second fueling system that injects fuel into a region outside of the cylinder; and where there is
`
`a range of torque where both fueling systems are used at the same value of torque; and where the
`
`fraction of fuel in the cylinder that is introduced by the first fueling system decreases with
`
`11
`
`FORD Ex. 1124, page 11
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`
`

`

`
`
`decreasing torque and the fuel management system controls the change in the fraction of fuel
`
`introduced by the first fueling system using closed loop control that utilizes a sensor that detects
`
`knock; and where the fuel management system also employs spark retard so as to reduce the
`
`amount of fuel that is introduced into the cylinder by the first fueling system.” Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`90.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed that a
`
`Patent Examiner issued a Final Rejection of Claims 6, 8-30 of U.S. Patent Application No.
`
`11/546,220 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (Pre-AIA), ¶ 2, during the prosecution
`
`of the application that ultimately issued as United States Patent No. 9,255,519. Plaintiffs deny
`
`the remaining allegations in this paragraph.
`
`EIGHTH COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement of the 166 Patent)
`
`Plaintiffs incorporate by reference their responses in the preceding paragraphs.
`
`Denied.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`
`
`91.
`
`92.
`
`93.
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`94.
`
`Denied.
`
`
`
`95.
`
`96.
`
`97.
`
`NINTH COUNTERCLAIM
`(Declaratory Judgment of Invalidity of the 166 Patent)
`
`Plaintiffs incorporate by reference their responses in the preceding paragraphs.
`
`Denied.
`
`Denied.
`
`12
`
`FORD Ex. 1124, page 12
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`

`
`
`Denied.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`98.
`
`99.
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`100.
`
`Denied.
`
`TENTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the 166 Patent)
`
`101.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`102.
`
`Plaintiffs admit that Ford “seeks a declaration that the claims of the 166 Patent are
`
`unenforceable” and that a duty of candor is owed to the United States Patent and Trademark
`
`Office. Plaintiffs deny the remaining allegations in this paragraph.
`
`103.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed U.S. Patent
`
`No. 6,651,432 during the prosecution of the application that ultimately issued as United States
`
`Patent No. 9,810,166. Plaintiffs deny the remaining allegations in this paragraph.
`
`104.
`
`Plaintiffs admit that the inventors, through their patent attorneys, filed U.S. Patent
`
`Application No. 11/758,157 on June 5, 2007, and that it was a continuation in part of U.S. Patent
`
`Application No. 10/991,774, which ultimately issued as U.S. Patent No. 7,314,033. Plaintiffs
`
`further admit that the Patent Examiner issued a Non-Final Rejection of Claims 31-67 of U.S.
`
`Patent Application No. 11/758,157 under 35 U.S.C. § 102(b) as being anticipated by Gray, Jr.
`
`(US 6,651,432 B1) on May 13, 2010. Plaintiffs deny the remaining allegations in this paragraph.
`
`13
`
`FORD Ex. 1124, page 13
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`

`

`
`
`105.
`
`Plaintiffs admit that the Patent Examiner issued a Non-Final Rejection of Claims
`
`31-67 of U.S. Patent Application No. 11/758,157 under 35 U.S.C. § 102(b) as being anticipated
`
`by Gray, Jr. (US 6,651,432 B1). Plaintiffs deny the remaining allegations in this paragraph.
`
`106.
`
`Plaintiffs admit that on June 18, 2018, the Applicant filed an Amendment and
`
`Remarks, the contents of which speak for themselves. Plaintiffs deny the remaining allegations
`
`in this paragraph.
`
`107.
`
`Plaintiffs admit that Gray recites the use of direct and port injection. Plaintiffs
`
`deny the remaining allegations in this paragraph.
`
`108.
`
`Plaintiffs admit that certain claims of U.S. Patent No. 8,069,839 recite the use of
`
`both direct and port fuel injection. Plaintiffs deny the remaining allegations in this paragraph.
`
`109.
`
`110.
`
`Denied.
`
`Plaintiffs admit that U.S. Patent Application No. 13/546,220, for which the United
`
`States Patent and Trademark Office issued a notice of abandonment, was titled “Optimized Fuel
`
`Management System for Direct Injection Ethanol Enhancement of Gasoline Engines” and was a
`
`continuation in part of U.S. Patent Application No. 10/991,774, which ultimately issued as U.S.
`
`Patent No. 7,314,033. Plaintiffs deny the remaining allegations in this paragraph.
`
`111.
`
`Plaintiffs admit that on October 9, 2013, the Patent Examiner issued a Final
`
`Rejection of Claims 6, 8-30 of U.S. Patent Application No. 11/546,220 under 35 U.S.C. § 112(b)
`
`or 35 U.S.C. § 112 (Pre-AIA), ¶ 2, which speaks for itself. Plaintiffs deny the remaining
`
`allegations in this paragraph.
`
`112.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed that a
`
`Patent Examiner issued a Final Rejection of Claims 6, 8-30 of U.S. Patent Application No.
`
`11/546,220 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (Pre-AIA), ¶ 2, during the prosecution
`
`14
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`FORD Ex. 1124, page 14
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`

`

`
`
`of the application that ultimately issued as United States Patent No. 9,810,166. Plaintiffs deny
`
`the remaining allegations in this paragraph.
`
`113.
`
`Plaintiffs admit that U.S. Patent Application No. 15/463,100, for which the United
`
`States Patent and Trademark Office issued a notice of abandonment, was titled “Optimized Fuel
`
`Management System For Direct Injection Ethanol Enhancement Of Gasoline Engines” and was a
`
`continuation of U.S. Patent Application No. 10/991,774, which ultimately issued as U.S. Patent
`
`No. 7,314,033. Plaintiffs deny the remaining allegations in this paragraph.
`
`114.
`
`Plaintiffs admit that on November 13, 2017, the Patent Examiner issued a Non-
`
`Final Rejection of Claims 32-67 of U.S. Patent Application 15/463,100 under 35 U.S.C. § 112(b)
`
`or 35 U.S.C. § 112 (Pre-AIA), ¶ 1, which speaks for itself. Plaintiffs deny the remaining
`
`allegations in this paragraph.
`
`115.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed that a
`
`Patent Examiner issued a Non-Final Rejection of Claims 32-67 of U.S. Patent Application
`
`15/463,100 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (Pre-AIA), ¶ 1, during the prosecution
`
`of the application that ultimately issued as United States Patent No. 9,810,166. Plaintiffs deny
`
`the remaining allegations in this paragraph.
`
`ELEVENTH COUNTERCLAIM
`(Declaratory Judgment of Non-Infringement of the 826 Patent)
`
`Plaintiffs incorporate by reference their responses in the preceding paragraphs.
`
`Denied.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`
`
`116.
`
`117.
`
`118.
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`15
`
`FORD Ex. 1124, page 15
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`
`
`119.
`
`Denied.
`
`TWELFTH COUNTERCLAIM
`(Declaratory Judgment of Invalidity of the 826 Patent)
`
`Plaintiffs incorporate by reference their responses in the preceding paragraphs.
`
`Denied.
`
`Denied.
`
`Denied.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`
`
`120.
`
`121.
`
`122.
`
`123.
`
`124.
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`125.
`
`Denied.
`
`THIRTEENTH COUNTERCLAIM
`(Declaratory Judgment of Unenforceability of the 826 Patent)
`
`126.
`
`This paragraph states legal conclusions to which no response is required. To the
`
`
`
`extent a response is required, Plaintiffs admit that, pursuant to 28 U.S.C. § 2201(a), an actual and
`
`justiciable controversy has arisen and exists between Plaintiffs and Defendant. Plaintiffs deny the
`
`remaining allegations in this paragraph.
`
`127.
`
`Plaintiffs admit that Ford “seeks a declaration that the claims of the 826 Patent are
`
`unenforceable” and that a duty of candor is owed to the United States Patent and Trademark
`
`Office. Plaintiffs deny the remaining allegations in this paragraph.
`
`128.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed U.S. Patent
`
`No. 6,651,432 during the prosecution of the application that ultimately issued as United States
`
`Patent No. 10,138,826. Plaintiffs deny the remaining allegations in this paragraph.
`
`16
`
`FORD Ex. 1124, page 16
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`

`
`
`129.
`
`Plaintiffs admit that the inventors, through their patent attorneys, filed U.S. Patent
`
`Application No. 11/758,157 on June 5, 2007, and that it was a continuation in part of U.S. Patent
`
`Application No. 10/991,774, which ultimately issued as U.S. Patent No. 7,314,033. Plaintiffs
`
`further admit that the Patent Examiner issued a Non-Final Rejection of Claims 31-67 of U.S.
`
`Patent Application No. 11/758,157 under 35 U.S.C. § 102(b) as being anticipated by Gray, Jr.
`
`(US 6,651,432 B1) on May 13, 2010. Plaintiffs deny the remaining allegations in this paragraph.
`
`130.
`
`Plaintiffs admit that the Patent Examiner issued a Non-Final Rejection of Claims
`
`31-67 of U.S. Patent Application No. 11/758,157 under 35 U.S.C. § 102(b) as being anticipated
`
`by Gray, Jr. (US 6,651,432 B1) on May 13, 2010. Plaintiffs deny the remaining allegations in
`
`this paragraph.
`
`131.
`
`Plaintiffs admit that on June 18, 2018, the Applicant filed an Amendment and
`
`Remarks, the contents of which speak for themselves. Plaintiffs deny the remaining allegations
`
`in this paragraph.
`
`132.
`
`Plaintiffs admit that Gray recites the use of direct and port injection. Plaintiffs
`
`deny the remaining allegations in this paragraph.
`
`133.
`
`Plaintiffs admit that certain claims of U.S. Patent No. 10,138,826 recite the use of
`
`both direct and port fuel injection. Plaintiffs deny the remaining allegations in this paragraph.
`
`134.
`
`135.
`
`Denied.
`
`Plaintiffs admit that U.S. Patent Application No. 13/546,220, for which the United
`
`States Patent and Trademark Office issued a notice of abandonment, was titled “Optimized Fuel
`
`Management System for Direct Injection Ethanol Enhancement of Gasoline Engines” and was a
`
`continuation in part of U.S. Patent Application No. 10/991,774, which ultimately issued as U.S.
`
`Patent No. 7,314,033. Plaintiffs deny the remaining allegations in this paragraph.
`
`17
`
`FORD Ex. 1124, page 17
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`
`

`

`
`
`136.
`
`Plaintiffs admit that on October 9, 2013, the Patent Examiner issued a Final
`
`Rejection of Claims 6, 8-30 of U.S. Patent Application No. 11/546,220 under 35 U.S.C. § 112(b)
`
`or 35 U.S.C. § 112 (Pre-AIA), ¶ 2, which speaks for itself. Plaintiffs deny the remaining
`
`allegations in this paragraph.
`
`137.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed that a
`
`Patent Examiner issued a Final Rejection of Claims 6, 8-30 of U.S. Patent Application No.
`
`11/546,220 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (Pre-AIA), ¶ 2, during the prosecution
`
`of the application that ultimately issued as United States Patent No. 10,138,826. Plaintiffs deny
`
`the remaining allegations in this paragraph.
`
`138.
`
`Plaintiffs admit that U.S. Patent Application No. 15/463,100, for which the United
`
`States Patent and Trademark Office issued a notice of abandonment, was titled “Optimized Fuel
`
`Management System For Direct Injection Ethanol Enhancement Of Gasoline Engines” and was a
`
`continuation of U.S. Patent Application No. 10/991,774, which ultimately issued as U.S. Patent
`
`No. 7,314,033. Plaintiffs deny the remaining allegations in this paragraph.
`
`139.
`
`Plaintiffs admit that on November 13, 2017, the Patent Examiner issued a Non-
`
`Final Rejection of Claims 32-67 of U.S. Patent Application 15/463,100 under 35 U.S.C. § 112(b)
`
`or 35 U.S.C. § 112 (Pre-AIA), ¶ 1, which speaks for itself. Plaintiffs deny the remaining
`
`allegations in this paragraph.
`
`140.
`
`Plaintiffs admit that neither the inventors nor their attorneys disclosed that a
`
`Patent Examiner issued a Non-Final Rejection of Claims 32-67 of U.S. Patent Application
`
`15/463,100 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (Pre-AIA), ¶ 1, during the prosecution
`
`of the application that ultimately issued as United States Patent No. 10,138,826. Plaintiffs deny
`
`the remaining allegations in this paragraph.
`
`18
`
`FORD Ex. 1124, page 18
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`
`
`PRAYER FOR RELIEF
`
`Plaintiffs deny that Defendant is entitled to any of the relief it seeks and request that the
`
`Court deny all such relief with prejudice and order that Defendant take nothing and enter
`
`judgment in Plaintiffs’ favor against Defendant as follows:
`
`A.
`
`B.
`
`C.
`
`Declaring that Ford has infringed each of the Asserted Patents;
`
`Declaring that Ford’s infringement has been willful;
`
`Awarding damages equal to those damages Plaintiffs have suffered as a result of
`
`Ford’s infringement, including no less than a reasonable royalty pursuant to 35 U.S.C. § 154(d)
`
`and 35 U.S.C. § 284, enhanced damages pursuant to 35 U.S.C. § 284, costs, and prejudgment
`
`and post-judgment interest;
`
`D.
`
`Awarding of Plaintiffs’ attorneys’ fees pursuant to 35 U.S.C. § 285 or as
`
`otherwise permitted by law; and
`
`E.
`
`Awarding Plaintiffs such other costs and further relief as the Court may deem just
`
`and proper.
`
`GENERAL DENIAL
`
`
`
`Except as expressly admitted above,