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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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`FORD MOTOR COMPANY
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`Petitioner,
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`v.
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`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
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`Patent Owner, and
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`ETHANOL BOOSTING SYSTEMS, LLC,
`Exclusive Licensee
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`Case No. IPR2020-00013
`U.S. Patent No. 8,069,839
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`PATENT OWNER PRELIMINARY RESPONSE
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`Case IPR2020-00013
`U.S. Patent No. 8,069,839
`
`Table of Contents
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`I.
`
`B.
`
`C.
`
`INTRODUCTION ........................................................................................... 6
`A. U.S. Patent No. 8,069,839 ..................................................................... 6
`B.
`References Relied Upon in the Petition and Proposed Grounds
`for Institution ....................................................................................... 10
`1.
`U.S. Patent No. 7,225,787 (“Bromberg”) (Ex. 1140). .............. 10
`2.
`U.S. Patent No. 7,694,666 (“Lewis”) (Ex. 1141). .................... 11
`Proposed grounds of institution .......................................................... 12
`C.
`THE PETITION SHOULD BE DENIED BECAUSE THE PREMISE OF
`II.
`PETITIONER’S WRITTEN DESCRIPTION ARGUMENT IS THAT “SINGLE
`FUEL” SYSTEMS FALL WITHIN THE SCOPE OF THE CLAIMS AS
`CONSTRUED, AND THE PETITION FAILS TO IDENTIFY THE CLAIM
`TERMS AND CLAIM CONSTRUCTIONS THAT PETITIONER KNOWS TO
`BE ESSENTIAL TO THE BOARD’S MAKING THIS DETERMINATION ....... 12
`A.
`Claim construction is required by the rules, and is also a
`necessary predicate to an analysis of written description ................... 13
`Petitioner has knowingly failed to “identify” let alone present
`claim constructions of key claim terms ............................................... 14
`Petitioner’s statement that it “adopts” unspecified aspects of
`Patent Owner’s arguments does not satisfy its claim
`construction burden. ............................................................................ 19
`1.
`Petitioner fails to specify what aspects of Patent Owner’s
`alleged “construction” it is adopting. ........................................ 19
`Petitioner disagrees with the “construction” it purports to
`adopt. ......................................................................................... 20
`The Board should deny institution because Petitioner has made
`a strategic decision not to provide this Board with required
`guidance on claim construction in order to advance conflicting
`arguments in district court. .................................................................. 22
`
`2.
`
`D.
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`U.S. Patent No. 8,069,839
`III. BY FAILING TO ENGAGE IN ANY ANALYSIS OF CLAIM
`LANGUAGE OR ANY ANALYSIS OF THE CLAIMS, PETITIONER
`UTTERLY FAILS TO MEET ITS BURDEN IN SHOWING LACK OF
`ENTITLEMENT TO THE PRIORITY CLAIM. .................................................... 24
`IV. THIS PETITION SHOULD BE DENIED BECAUSE, IRRESPECTIVE OF
`WHETHER “SINGLE FUEL” SYSTEMS FALL WITHIN THE SCOPE OF THE
`CLAIMS, PETITIONER HAS FAILED TO SHOW THAT THE IDENTITY OF
`THE “FUEL” RECITED IN THE SYSTEMS CLAIMS OF THE PATENT IS A
`CLAIM LIMITATION HAVING PATENTABLE WEIGHT. .............................. 26
`V.
`PETITIONER’S ARGUMENT THAT THE CLAIMS NEED TO
`INCLUDE THE ADVANTAGES OF METHODS OF USING THE CLAIMED
`“ENGINE” ARE MISPLACED: A CLAIMED “ENGINE” NEED NOT
`PROVIDE ADVANTAGES TAUGHT IN THE SPECIFICATION THAT
`RESULT FROM METHODS OF ITS USE. ........................................................... 32
`VI. THE COMMON SPECIFICATION DOES NOT DISPARAGE USES OF
`THE CLAIMED ENGINES WITH GASOLINE AS BOTH THE DIRECTLY
`INJECTED AND PORT INJECTED FUEL, NOR USE OF A COMBINATION
`OF THE CLAIMED ENGINES WITH FUEL TANKS CONTAINING A
`“SINGLE FUEL” AS ADDITIONAL SYSTEM COMPONENTS. ....................... 36
`VII. EACH OF THE CHALLENGED CLAIMS IS ENTITLED TO THE
`PRIORITY DATE OF THE PARENT APPLICATION ......................................... 43
`VIII. FOR THE FOREGOING REASONS, NONE OF THE CITED
`REFERENCES ARE PRIOR ART TO THE ’839 PATENT, AND BOTH
`GROUNDS OF INSTITUTION SHOULD BE DENIED ....................................... 48
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`Case IPR2020-00013
`U.S. Patent No. 8,069,839
`
`Table of Authorities
`
`Cases
`Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343 (Fed. Cir. 2001) .. 18
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003) ...... 33
`
`Application of Goffe, 542 F.2d 564 (C.C.P.A. 1976) .............................................. 37
`
`Application of Otto, 312 F.2d 937 (CCPA, 1963) ................................................... 29
`
`C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340 (Fed. Cir. 1998) ..................... 14
`
`Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788 (Fed. Cir. 2019) .................. 40, 41
`
`Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp., 635
`F.3d 1373 (Fed. Cir. 2011) ................................................................................... 33
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015)
` .............................................................................................................................. 25
`
`Ex Parte Bergdoll, No. 2009-011825 (BPAI, Mar. 23, 2011)................................. 28
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) ................. 12, 14
`
`Hologic, Inc. v. Enzo Life Sciences, Inc., IPR 2018-00019 (PTAB Apr. 18, 2018) 21
`
`i4i Ltd. P’Ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) ......................... 41
`
`In re Wright, 866 F.2d 422 (Fed. Cir. 1989) ............................................................ 25
`
`Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F. 3d 1320 (Fed. Cir.
`2017) .................................................................................................................... 13
`
`Koninklijke Philips Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326 (Fed.
`Cir. 2010) ............................................................................................................. 14
`
`Lochner Technologies, LLC v. Vizio, Inc., 567 Fed. App’x. 931 (Fed. Cir. 2014) . 31
`
`Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710 (Fed. Cir. 2008) ...................... 25
`
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`U.S. Patent No. 8,069,839
`Orthopediatrics Corp. v. K2M, Inc., Case IPR2018-01548 (PTAB, Mar 1, 2019)21,
`22
`
`Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320 (Fed. Cir. 2000) .......... 26, 39
`
`Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570 (Fed. Cir. 1985) ............. 25
`
`Spine Sols., Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305 (Fed. Cir.
`2010) ............................................................................................................. 26, 27
`
`Stiftung v. Renishaw PLC, 945 F.2d 1173 (Fed. Cir. 1991) .................................... 35
`
`Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353 (Fed. Cir. 2016) ..................... 40
`
`Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556 (Fed.Cir.1994) ..... 26
`Statutes
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`35 U.S.C. § 312(a)(3) ............................................................................................... 12
`
`35 U.S.C. § 313 .......................................................................................................... 6
`Rules
`37 C.F.R. § 42.104(b)(3) ....................................................................... 13, 16, 18, 22
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`37 C.F.R. § 42.104(b)(4) ....................................................................... 13, 16, 18, 22
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`37 C.F.R. § 42.107 ..................................................................................................... 6
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`37 C.F.R. § 42.24 ..................................................................................................... 51
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`37 C.F.R. § 42.24(b)(1) ............................................................................................ 51
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`37 C.F.R. §§ 42.6(e) ................................................................................................. 52
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`Case IPR2020-00013
`U.S. Patent No. 8,069,839
`
`I.
`
`INTRODUCTION
`Patent Owner Massachusetts Institute of Technology (“Patent Owner” or
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`“MIT”) respectfully submits this Preliminary Response in accordance with 35
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`U.S.C. § 313 and 37 C.F.R. § 42.107 responding to the Petition for inter partes
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`Review (the “Petition”) filed by Ford Motor Company (“Ford” or “Petitioner”)
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`challenging Claims 1-8 (the “Challenged Claims”) of U.S. Patent No. 8,069,839
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`(the “’839 Patent”).
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`A. U.S. Patent No. 8,069,839
`The ’839 Patent is directed to fuel-management systems for improving the
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`efficient operation of spark-ignition (SI) gasoline engines. See ’839 Patent,
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`Abstract. Generally speaking, the efficiency of SI gasoline engines can be
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`increased by operating at a high compression ratio and by engine downsizing. See
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`’839 Patent at 1:18-32. Engine downsizing is made possible by using substantial
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`pressure boosting from either turbocharging or supercharging. Id. Such pressure
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`boosting makes it possible to obtain the same performance in a significantly
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`smaller engine, thereby increasing efficiency. Id. The use of these techniques to
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`increase engine efficiency, however, is limited by the onset of “engine knock.” Id.
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`Engine knock is the undesired detonation of fuel and can severely damage an
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`engine. If engine knock can be suppressed, then higher compression ratio operation
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`and higher-pressure boosting can be used to increase engine efficiency. Id.
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`Case IPR2020-00013
`U.S. Patent No. 8,069,839
`The ’839 Patent discloses a fuel management system for a spark ignition
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`engine that uses two fueling systems—port fuel injection and direct fuel
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`injection—and controls them so as to realize the benefits of both. Each fueling
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`system comes with certain advantages and disadvantages. A benefit of direct
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`injection is that it provides greater knock resistance than port fuel injection.
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`However, a downside of direct injection is that it provides less complete fuel-air
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`mixing and poorer combustion stability than port injection. See ’839 Patent at 3:22-
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`27. Complete fuel-air mixing and good combustion stability provide important
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`benefits for engine operation, including lower emissions. In some embodiments,
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`the invention improves over the prior art by disclosing how to use direct injection
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`to suppress knock so that higher compression ratios or downsized engines with
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`turbo- or supercharging can be used to increase the efficiency of the engine while
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`using different combinations of port and direct injection to reduce the amount of
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`direct injection during parts of a drive cycle, and in at least some embodiments,
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`minimizing the amount of direct injection used during a drive cycle. The
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`disadvantages resulting from fueling with direct injection (e.g., less complete fuel-
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`air mixing and poorer combustion stability) are thus minimized while the
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`beneficial impact of the increased knock resistance provided by direct injection on
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`the engine performance and efficiency is maintained.
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`U.S. Patent No. 8,069,839
`To achieve these benefits, the ’839 Patent discloses a fuel management
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`system that controls both (a) direct injection of a fuel into the cylinder of the spark
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`ignition engine in a manner that suppresses knock, as well as (b) port fuel
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`injection. See ’839 Patent at 1:66-2:15.1 The direct injection of fuel into the
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`cylinder produces a cooling effect that suppresses knock; specifically, the heat of
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`vaporization of the directly injected fuel produces cooling of the air-fuel charge
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`(i.e., evaporative cooling) when the fuel is directly injected into the engine. See id.
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`This type of cooling is referred to as “charge” cooling. Id.
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`The ’839 patent discloses an innovative fuel management system that both
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`controls the direct injection of fuel into the cylinder of the spark ignition engine to
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`suppress knock and controls port fuel injection. This system produces a knock
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`suppression effect relative to what would be obtained with port fuel injection alone,
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`which results from the charge cooling effect of directly injecting fuel into the
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`cylinder of the spark ignition engine. See id. at 3:66-4:18. For example, direct
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`injection of gasoline results in an enhancement of the knock resistance of gasoline
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`(resulting from evaporative cooling) that is equivalent to an increase of five octane
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`numbers relative to port fuel injection of gasoline over and above any benefit from
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`using an improved octane number gasoline. See id. at 3:67-4:2. The ’839 Patent
`
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`1 Petitioner uses the acronym “DI” to refer to “direct injection” and “PI” to refer to
`“port fuel injection.” See, e.g., Petition at 6.
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`teaches achieving the benefits of knock suppression in a dual fuel injection system
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`that uses both direct and port fuel injection.
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`In one embodiment, the ’839 Patent discloses a preferred type of fuel that
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`can be directly injected using the fuel management system, namely, ethanol. See
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`id. at 2:5-6. The intrinsic properties of ethanol yield improved octane number
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`properties as compared with gasoline – specifically, ethanol has an octane number
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`fifteen higher than gasoline – but the ’839 Patent also discloses an additional
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`octane enhancement (separate from ethanol’s intrinsic octane rating) that is
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`produced by the charge cooling effect of directly injecting ethanol into the
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`cylinder. This direct injection of ethanol produces an additional octane
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`enhancement of twenty octane numbers. See id. at 4:7-13.
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`Importantly, the ’839 Patent does not limit the octane-enhancement benefits
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`produced by the charge cooling effect of direct injection to the use of specific fuels
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`such as ethanol. Rather, the ’839 Patent indicates that “[w]herever ethanol is used
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`herein it is to be understood that other antiknock agents are contemplated.” Id. at
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`1:66-2:15. Furthermore, the ’839 Patent describes a five octane number decrease in
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`the required octane number that may be obtained when gasoline is directly injected
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`into the cylinder. See id. at 3:67-4:2. Thus, the ’839 Patent discloses an added
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`octane enhancement that is achieved from direct injection of fuel generally –
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`including gasoline – not just from direct injection of ethanol specifically. Indeed,
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`the ’839 Patent explicitly states that it “is also possible to use direct injection of
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`gasoline as well as direct injection of ethanol.” Id. at 3:54-55.
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`In addition to disclosing benefits of knock suppression from direct fuel
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`injection into the cylinder of the spark ignition engine, the ’839 Patent discloses
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`other benefits that can be achieved from implementing its dual injection fuel
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`management system beyond the use of direct fuel injection. For example, the ’839
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`Patent states that, apart from increased knock resistance from the cooling effect of
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`direct injection, port fuel injection is generally preferred over direct fuel injection
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`because port fuel injection “is advantageous in obtaining good air/fuel mixing and
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`combustion stability that are difficult to obtain with direct injection.” See ’839
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`Patent at 3:22-27. Therefore, the systems claimed in the ’839 Patent achieve
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`multiple advantages, in addition to those achieved using direct fuel injection.
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`B. References Relied Upon in the Petition and Proposed Grounds for
`Institution
`The Petition relies on two references in support of its two proposed grounds
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`for Institution as described below. Neither are “prior” to the ’839 Patent’s 2004
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`priority date.
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`1.
`U.S. Patent No. 7,225,787 (“Bromberg”) (Ex. 1140).
`Bromberg bears a continuation-in-part relationship to the ’839 Patent. The
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`’839 Patent has a priority date of 2004 because it claims priority, through a chain
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`of continuations, to U.S. Patent Application No. 10/991,774, which issued as U.S.
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`Case IPR2020-00013
`U.S. Patent No. 8,069,839
`Patent No. 7,314,033 (“the ’033 Patent”), filed on November 18, 2004 (here, “the
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`2004 priority date”). Bromberg, in contrast, is a continuation-in-part of the
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`application that became the ’033 Patent, and thus claims priority both to the same
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`2004 priority date of the ’033 Patent as is claimed in the ’839 Patent, and to the
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`Bromberg patent’s own filing date of April 6, 2005 (here, the “2005 Bromberg
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`filing date”). See ’839 Patent at 1:5-11; Ex. 1140 at 1:5-9.
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`Because Bromberg bears this continuation-in-part relationship to the ’839
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`Patent, Bromberg has a priority date that is either later than the 2004 priority date
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`(for subject matter of Bromberg that was first taught at the 2005 Bromberg filing
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`date), or that is the same as the 2004 priority date (for subject matter of Bromberg
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`that was first taught in the application that became the ’033 Patent). See id.
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`As such, Bromberg’s earliest priority date is not earlier than the earliest
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`application to which the ’839 Patent claims priority.
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`2.
`U.S. Patent No. 7,694,666 (“Lewis”) (Ex. 1141).
`Lewis was filed July 21, 2008, and claims priority to U.S. Patent Application
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`No. 11/291,289, issued as U.S. Patent No. 7,406,947, filed on November 30, 2005.
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`As noted above, the ’839 Patent has a November 18, 2004 priority date (by
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`continuing from the application that became the ’033 Patent), which is nearly four
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`years earlier than Lewis’s July 21, 2008 priority date. See ’839 Patent at 1:5-11;
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`Ex. 1141 at 1:7-11 and cover page. Thus, the earliest priority claim of Lewis is
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`later than the earliest application to which the ’839 Patent claims priority. See id.
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`Proposed grounds of institution
`C.
`The proposed grounds are summarized in the table below:
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`Ground
`1
`2
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`’839 Patent
`Claims
`1-8
`1-8
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`Reference
`Bromberg
`Lewis
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`Type of Challenge
`§ 102
`§ 102
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`
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`II. THE PETITION SHOULD BE DENIED BECAUSE THE PREMISE
`OF PETITIONER’S WRITTEN DESCRIPTION ARGUMENT IS
`THAT “SINGLE FUEL” SYSTEMS FALL WITHIN THE SCOPE OF
`THE CLAIMS AS CONSTRUED, AND THE PETITION FAILS TO
`IDENTIFY THE CLAIM TERMS AND CLAIM CONSTRUCTIONS
`THAT PETITIONER KNOWS TO BE ESSENTIAL TO THE
`BOARD’S MAKING THIS DETERMINATION
`“In an [inter partes review], the petitioner has the burden from the onset to
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`show with particularity why the patent it challenges is unpatentable.” Harmonic
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`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
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`§ 312(a)(3) (requiring inter partes review petitions to identify “with
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`particularity . . . the evidence that supports the grounds for the challenge to each
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`claim”)). Petitioner has failed to meet its burden. Specifically, and as elaborated
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`below, Petitioner’s argument for institution requires the Board to find that the ’839
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`Patent’s spark ignition engine covers a single-fuel system—i.e., one in which the
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`system relies on a single fuel for both port and direct injection. At the same time,
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`however, Petitioner fails to present a construction of the patent showing that the
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`claims cover a single fuel system. Petitioner has done this strategically to avoid
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`taking a position wholly inconsistent with its position in a parallel district court
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`litigation, in which it claims that the ’839 Patent covers only dual fuel systems—
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`i.e., ones in which the port-injected fuel is different from the direct-injected fuel—
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`and excludes single fuel systems. In attempting to side-step this inconsistency,
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`however, Petitioner fails to meet its burden under Board rules to expressly
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`articulate claim constructions that are necessary for the Board to resolve the
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`Petition in its favor. This failure is grounds to deny the Petition.
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`A. Claim construction is required by the rules, and is also a
`necessary predicate to an analysis of written description
`Part of the Petitioner’s burden, as set forth in the Board’s Rules, includes a
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`requirement that the Petitioner first “identify . . . [h]ow the challenged claim is to
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`be construed” and then demonstrate “[h]ow the construed claim is unpatentable.”
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`37 C.F.R. § 42.104(b)(3); 37 C.F.R. § 42.104(b)(4) (emphasis added).
`
`In addition, claim construction is a necessary predicate to an analysis of
`
`written description because claim construction determines the scope of the claim
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`against which written description support is evaluated. See Intellectual Ventures I
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`LLC v. Motorola Mobility LLC, 870 F. 3d 1320, 1325-26 (Fed. Cir. 2017)
`
`(reversing a finding that written description did not support claimed invention
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`where the claims had not been properly construed); accord Koninklijke Philips
`
`Elecs. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1336 (Fed. Cir. 2010)
`
`(“A district court must base its analysis of written description under § 112, ¶ 1 on
`
`proper claim construction.”); C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340,
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`1360 (Fed. Cir. 1998) (“[I]t is incorrect to construe the claims contrary to the
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`specification, and then to hold the claims invalid because they are contrary to the
`
`specification.”).
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`Thus, where, as here, the Petitioner invokes lack of written description
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`support in alleging that the claims are not entitled to their earliest priority date,
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`there is all the more reason to require that the Petitioner meet the burden,
`
`established by Board Rules, of providing a claim construction. For the reasons set
`
`forth below, the Petition fails to comply with this requirement of providing a claim
`
`construction, and thus fails to meet its burden of “show[ing] with particularity why
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`the patent…is unpatentable.” Harmonic Inc., 815 F.3d. at 1363.
`
`B.
`Petitioner has knowingly failed to “identify” let alone present
`claim constructions of key claim terms
`Petitioner understood from the beginning that claim construction would be
`
`necessary for the Board to resolve the issues presented in its Petition. Petitioner’s
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`arguments start from the premise that the ’839 Patent covers a “single fuel”
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`system—that is, an engine in which the same fuel is used for port and direct
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`injection. See Petition at 7. Because “single fuel” systems were allegedly not
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`described in priority applications, Petitioner argues that claims that read on such
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`single-fuel systems cannot find written description support in the priority
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`applications. See Petition at 8. Petitioner then argues that, because the ’839 Patent
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`cannot claim the priority-date benefit of its parent applications, the cited references
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`become alleged prior art to the claims. Because the premise of Petitioner’s
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`argument is that the ’839 Patent covers a “single fuel” system, Petitioner was
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`required to present to the Board claim terms and claim constructions necessary to
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`establish this premise.
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`Petitioner did not do so. Instead, Petitioner merely stated that it “adopts” an
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`aspect of the Patent Owner’s proposed claim construction from the Patent Owner’s
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`litigation of the ’839 Patent against the Petitioner in a separate district court
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`litigation. See Petition at 7. However, the Petitioner has not made a showing of
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`any reason why the Board must adopt any such proposed claim construction from
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`that litigation, nor has it identified any specific claim element that allegedly lacks
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`written description support. Instead, Petitioner merely states that it “adopts” certain
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`unspecified claim constructions proposed by the Patent Owner itself, in the
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`litigation – which as discussed below is a claim construction with which the
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`Petitioner disagrees. See id. Moreover, Petitioner has not even tied the construction
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`that it purports to “adopt” on behalf of the Board to any specific claim element of
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`the ’839 Patent. Instead, the Petitioner states that the “challenged claims should be
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`construed to be broad enough to include a system using DI and PI of the same fuel
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`from the same fuel source.” Id. (emphases added). However, stating that the claims
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`are “broad enough” does not identify which specific claim element is “broad
`
`enough,” and therefore does not even identify which claim element is allegedly
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`lacking in written description. Id.
`
`Thus, even though Petitioner’s argument for unpatentability depends upon a
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`construction of the patent’s claims, Petitioner nowhere identifies “[h]ow the
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`challenged claim is to be construed” nor indicates how, given that construction,
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`“the construed claim is unpatentable.” 37 C.F.R. §§ 42.104(b)(3), (b)(4).
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`Petitioner’s failure to provide a claim construction was knowing, willful, and
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`strategic. In co-pending district court litigation, Petitioner was accused of
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`infringing the ’839 Patent by selling “single fuel” systems.
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`In order to preserve its ability to argue for a narrow claim construction
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`before the district court (that the patent claims only dual-fuel and not single-fuel
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`systems) while adopting contradictory positions in concurrent proceedings (that
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`the patent also covers single fuel systems), Petitioner opted to obscure this critical
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`issue of claim construction before this Board.
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`Meanwhile, in the district court, Petitioner took a firm position opposite to
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`the one it relies on for its written description argument here. Petitioner argued the
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`’839 Patent required the use of two different fuels—one fuel for port injection and
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`a different one for direct injection. Petitioner additionally argued that the direct
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`fueling system required “a fuel that contains an anti-knock agent that is not
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`gasoline.” See Ex. 1144, 6-7. Petitioner’s position thus required the district court to
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`construe the following terms: “fuel that is directly injected” and “directly injected
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`fuel.” Id. 2
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`The district court adopted Petitioner’s constructions of these terms. It
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`construed both terms relating to direct injection as requiring “a fuel that contains
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`an anti-knock agent that is not gasoline, and that is different from the fuel used for
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`port injection/in the second fueling system.” See Ex. 2001 at 6 (19:11-20:24); Ex.
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`2002 at 1-2. Thus, petitioner not only advocated for, but succeeded in convincing
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`the district court to adopt, a construction of specific claim terms in the ’839 patent
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`that limits the system to a “dual fuel” engine—i.e., one in which the fuel that is
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`port injected is different from the fuel that is directly injected. Id. This construction
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`is directly contrary to Petitioner’s vague request in its Petition that the “challenged
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`claims should be construed to be broad enough to include a system using DI and PI
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`of the same fuel from the same fuel source.” Petition at 7.
`
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`2 For avoidance of any doubt, Patent Owner disagrees with and disputes the
`constructions Petitioner advanced in the district court litigation and reserves all
`rights to advance in this and any other Board proceeding constructions that differ
`from the constructions Petitioner proposed in the district court.
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`Petitioner knew that the construction of these same claim terms is necessary
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`for its priority-date arguments here. As such, Petitioner should have expressly
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`identified the claim terms necessary for its argument, stated “[h]ow the challenged
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`claim[s] [are] to be construed” and included in its Petition an explanation of
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`“[h]ow the construed claim[s] [are] unpatentable” 37 C.F.R. §§ 42.104(b)(3),
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`42.104(b)(4). Petitioner chose not to do so, however, because the claim
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`construction it argued for in the district court would undermine the premise of its
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`argument here: that the ’839 Patent covers a “single fuel” system.3 Apparently
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`unwilling to openly advance directly contradictory claim constructions in parallel
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`proceedings, Petitioner instead chose to ignore its duties under the rules altogether
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`and to say nothing about what it thought the key claim terms were or how they
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`should be construed. But the rules do not excuse Petitioners from expressly stating
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`their constructions. And permitting Petitioner to proceed in this manner would
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`violate the age-old principle that patents “may not, like a nose of wax, be twisted”
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`in two opposite directions—one to support an argument of non-infringement, and
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`another to avoid invalidity. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239
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`F.3d 1343, 1351 (Fed. Cir. 2001) (citations and internal quotation marks omitted).
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`3 Petitioner states in a footnote that it “preserved its argument [in district court] that
`the ‘type of fuel required to be used in direct injection is a fuel that contains an
`anti-knock agent that is not gasoline, and that is different from the fuel used for
`port injection in the second fueling system.” Petition at 7 n.3 (emphasis added).
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`Moreover, as noted above, the Petitioner’s failure to advance a necessary
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`claim construction is even more glaring where the basis of Petitioner’s invalidity
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`argument is an alleged lack of written description. See Intellectual Ventures I, 870
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`F. 3d at 1325-26 (invalidity determinations of an inadequate written description of
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`the claimed invention necessarily depend on a proper construction of the claim).
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`The Board’s rules do not permit Petitioners to avoid their duties of stating
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`express claim constructions necessary to their argument for institution, particularly
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`when the Petitioners’ grounds for institution depend on specific claim
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`constructions. Because the Petitioner’s institution argument here requires a specific
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`construction of the ’839 Patent’s claims, and because Petitioner has failed to
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`advance any such construction, institution should be denied.
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`C.
`Petitioner’s statement that it “adopts” unspecified aspects of
`Patent Owner’s arguments does not satisfy its claim construction
`burden.
`Although Petitioner states that it “adopts” the Patent Owner’s proposed
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`claim construction from the district court litigation, such a statement is insufficient
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`to satisfy Petitioner’s burdens under the rules. See Petition at 7.
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`1.
`Petitioner fails to specify what aspects of Patent Owner’s
`alleged “construction” it is adopting.
`Petitioner’s first problem is that it fails to specify what aspects of Patent
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`Owner’s alleged “construction” it is adopting. Petitioner states:
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`Patent Owner is asserting its claims against certain Ford EcoBoost
`engines that are known to use a single fuel, e.g., gasoline. This single
`fuel is used by both the PI and DI systems. Accordingly, Petitioner
`adopts Patent Owner’s broad construction for purposes of this
`proceeding, and the challenged claims should be construed to be
`broad enough to include a system using DI and PI of the same fuel
`from the same fuel source.
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`Petition at 7 (citations omitted; emphases added). Although Petitioner says that it
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`“adopts” the Patent Owner’s “construction,” Petitioner fails to identify a single
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`claim term that would yield such a result, much less a specific “construction” it is
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`supposedly “adopting.” All that is discernable from Petitioner’s statement is that
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`“Patent Owner is asserting its claims against certain Ford EcoBoost engines that
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`are known to use a single fuel” and that under some unspecified construction of the
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`claims and/or unspecified terms thereof, Patent Owner therefore believes that the
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`claims are “broad enough to include a [single fuel] system.” Yet none of these
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`claim terms, much less their claim constructions, are specifically “identif[ied]” in
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`the Petition. 37 C.F.R. § 42.104(b).
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`2.
`Petitioner disagrees with the “construction” it purports to
`adopt.
`In addition, Petitioner clearly disagrees with the Patent Owner’s
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`“construction” it purports to “adopt.” Evidence of this disagreement is cl