Trials@uspto.gov
`571-272-7822
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`
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`Paper 9
`Entered: March 26, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`IPR2020-00013
`Patent 8,069,839 B2
`____________
`
`
`
`Before KEN B. BARRETT, LYNNE H. BROWNE, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`

`

`IPR2020-00013
`Patent 8,069,839 B2
`
`
`I.
`
`INTRODUCTION
`Summary
`A.
`Ford Motor Company (“Petitioner”)1 filed a Petition requesting inter
`
`partes review of U.S. Patent No. 8,069,839 B2 (“the ’839 patent,”
`Ex. 1101). Paper 2 (“Pet.”). The Petition challenges the patentability of
`claims 1–8 of the ’839 patent. Massachusetts Institute of Technology
`(“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 7
`(“Prelim. Resp.”).
`
`An inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having
`considered the arguments and evidence presented by Petitioner and Patent
`Owner, we determine that Petitioner has not demonstrated a reasonable
`likelihood of prevailing in showing that at least one of the challenged claims
`of the ’839 patent is unpatentable. Accordingly, we do not institute an inter
`partes review and the Petition is denied. Additionally and for the reasons set
`forth below, we exercise our discretion under 35 U.S.C. § 314(a) not to
`institute trial in this proceeding.
`
`Related Proceedings
`B.
`One or both parties identify, as matters involving or related to
`
`the ’839 patent, Ethanol Boosting Systems, LLC v. Ford Motor Company,
`
`
`1 Petitioner identifies Ford Motor Company as the real party-in-interest.
`Pet. 58.
`2 Patent Owner identifies “Massachusetts Institute of Technology, the Patent
`Owner, and Ethanol Boosting Systems, LLC, the Exclusive Licensee,” as
`real parties-in-interest. Paper 8, 2.
`
`2
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`IPR2020-00013
`Patent 8,069,839 B2
`
`Civil Action No. 1:19-cv-00196-CFC-SRF (D. Del.), Ethanol Boosting
`Systems, LLC v. Ford Motor Company, Appeal No. 2020-1472 (Fed. Cir.),
`and Patent Trial and Appeal Board case IPR2019-01400. Pet. 58–59;
`Paper 8, 2–6. The parties also identify, as involving challenges to related
`patents, IPR2019-01399 and IPR2020-00010 (US 9,810,166 B2), IPR2019-
`01401 and IPR2020-00011 (US 9,255,519 B2), and IPR2019-01402 and
`IPR2020-00012 (US 10,138,826 B2). Pet. 59; Paper 8, 2–3.
`
`We instituted trial in IPR2019-01399, IPR2019-01401, and
`IPR2019-01402 and denied institution in IPR2019-01400. We, concurrently
`with the instant decision, are denying institution in IPR2020-00010,
`IPR2020-00011, and IPR2020-00012.
`
`The ’839 Patent
`C.
`The ’839 patent, titled “Fuel Management System for Variable
`
`Ethanol Octane Enhancement of Gasoline Engines,” issued December 6,
`2011, from an application filed May 27, 2011, and ultimately claims priority,
`through several continuation applications, to an application filed
`November 18, 2004. Ex. 1101, codes (54), (45), (22), (63). The ’839 patent
`is directed “to spark ignition gasoline engines utilizing an antiknock agent
`which is a liquid fuel with a higher octane number than gasoline such as
`ethanol to improve engine efficiency.” Id. at 1:14–17. Figure 1 of the ’839
`patent is reproduced below.
`
`3
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`IPR2020-00013
`Patent 8,069,839 B2
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`
`
`Figure 1 depicts “a block diagram of one embodiment of the invention
`disclosed” in the ’839 patent. Id. at 2:44–45. Spark ignition gasoline
`engine 10 includes knock sensor 12, fuel management microprocessor
`system 14, engine manifold 20, and turbocharger 22. Id. at 2:61–3:2.
`Ethanol tank 16 contains an anti-knock agent, such as ethanol, and gasoline
`tank 18 contains the primary fuel, such as gasoline. Id. at 2:63–3:1. Fuel
`management microprocessor system 14 controls the direct injection of the
`anti-knock agent into engine 10 and the injection of gasoline into engine
`manifold 20. Id. “The amount of ethanol injection is dictated either by a
`predetermined correlation between octane number enhancement and fraction
`of fuel that is provided by ethanol in an open loop system or by a closed
`loop control system that uses a signal from the knock sensor 12 as an input
`to the fuel management microprocessor 14.” Id. at 3:2–8. The fuel
`management system minimizes the amount of ethanol directly injected into
`the cylinder while still preventing engine knock. Id. at 3:8–10.
`
`4
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`IPR2020-00013
`Patent 8,069,839 B2
`
`“Direct injection substantially increases the benefits of ethanol
`
`addition and decreases the required amount of ethanol. . . . Because ethanol
`has a high heat of vaporization there will be substantial cooling when it is
`directly injected into the engine 10,” which “further increases knock
`resistance.” Id. at 3:13–21. The amount of octane enhancement needed
`from the ethanol to prevent knocking is a function of the torque level. Id.
`at 5:42–53. In the embodiment of Figure 1, “port fuel injection of the
`gasoline in which the gasoline is injected into the manifold rather than
`directly injected into the cylinder is preferred because it is advantageous in
`obtaining good air/fuel mixing and combustion stability that are difficult to
`obtain with direct injection.” Id. at 3:22–27.
`
`Illustrative Claims
`D.
`Of the challenged claims of the ’839 patent, claim 1 is the sole
`
`independent claim. The remaining challenged claims depend directly or
`indirectly from independent claim 1. Independent claim 1, reproduced
`below, is illustrative.
`1. A spark ignition engine that is fueled both by direct
`injection and by port injection wherein above a selected torque
`value the ratio of fuel that is directly injected to fuel that is port
`injected increases; and wherein the engine is operated at a
`substantially stoichiometric fuel/air ratio.
`Ex. 1101, 7:7–11.
`
`
`
`Evidence
`E.
`Petitioner relies on the following references:
`Reference
`Dates
`
`Bromberg US 7,225,787 B2
`
`Filed April 6, 2005;
`Issued June 5, 2007
`
`Exhibit No.
`
`1140
`
`5
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`IPR2020-00013
`Patent 8,069,839 B2
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`
`Reference
`
`Dates
`
`Lewis
`
`US 7,694,666 B2 Filed July 21, 2008;
`Issued April 13, 2010
`
`Exhibit No.
`
`1141
`
`Petitioner also relies on the Declaration of Dr. Nigel N. Clark
`
`(Ex. 1103) in support of its arguments. The parties rely on other exhibits as
`discussed below.
`
`Asserted Grounds of Unpatentability
`F.
`Petitioner asserts that the challenged claims are unpatentable on the
`
`following grounds:
`Claims Challenged
`1–8
`1–8
`
`35 U.S.C. §
`102(b) (pre-AIA)3
`102(e) (pre-AIA)
`
`Reference/Basis
`Bromberg
`Lewis
`
`II. PROCEDURAL POSTURE
`On January 30, 2019, Patent Owner filed a complaint in the United
`
`States District Court for the District of Delaware (“the District Court”)
`accusing Petitioner of infringing certain patents, including the ’839 patent.
`Pet. 58; see also Ex. 1122 (identified by Petitioner as the subject complaint).
`
`On August 13, 2019, Petitioner filed a petition challenging claims 1–8
`of the ’839 patent. IPR2019-01400, Paper 2, 1. In that petition, Petitioner
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`which was enacted on September 16, 2011, made amendments to certain
`statutory provisions including 35 U.S.C. § 102. E.g., AIA § 3(b). Those
`amendments became effective eighteen months later on March 16, 2013. Id.
`at § 3(n). For the reasons set forth herein, we do not reach the issue of
`whether the challenged patent is entitled to an effective filing date prior to
`March 16, 2013, and therefore need not reach the issue as to whether
`pre-AIA or AIA provisions apply. Unless otherwise specified, we, as a
`matter of convenience, refer to the pre-AIA provisions.
`6
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`IPR2020-00013
`Patent 8,069,839 B2
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`presented five grounds against those challenged claims. See id. at 1–2. On
`February 24, 2020, we denied institution of a trial. IPR2019-01400,
`Paper 11.
`
`In September 2019, the parties filed in the District Court their
`proposed construction of certain claim terms. Ex. 1144 (Joint Claim
`Construction Chart). In the Joint Claim Construction Chart, each party set
`forth its respective proposed construction for the variations of claim
`recitations related to the directly injected fuel. Id. at 6–7.4 Patent Owner
`asserts, in the District Court, that the phrases do not need construction and
`should be given the plain and ordinary meaning.5 Id. Petitioner asserts, in
`the District Court, that the direct-injection recitations require “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.” Id. at 6. Both
`parties identified intrinsic evidence purportedly supporting their respective
`position. Id. at 7.
`
`On October 16, 2019, Petitioner filed the instant Petition challenging
`claims 1–8 of the ’839 patent. Pet. 1. This Petition presents anticipation
`challenges both based on references dated after the date of the earliest filed
`application referenced in the ’839 patent and before the filing date of the
`application that issued as the ’839 patent. Compare Pet. 18–20 (Petitioner
`identifying dates for the relied-upon references of 2005 through 2010), with
`
`
`4 The pertinent claim recitations include, for example, “fuel that is directly
`injected” and “directly injected fuel” of claims 1 and 2, respectively, of U.S.
`Patent No. 8,069,839 B2 and “fuel provided by direct injection” of claim 5
`of U.S. Patent No. 9,810,166 B2. See Ex. 1144, 2, 6.
`5 Patent Owner also provided an alternative construction not pertinent to the
`issues before us presently. Ex. 1144, 6–7.
`7
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`

`IPR2020-00013
`Patent 8,069,839 B2
`
`Ex. 1101, codes (63), (22) (earliest and latest filing dates of 2004 and 2011,
`respectively). As discussed below, Petitioner argues that the parent
`applications in the priority chain of the ’839 patent do not provide written
`description support, under Petitioner’s adopted claim construction, for the
`presently challenged claimed subject matter. See Pet. 7–18. Thus,
`according to Petitioner, its relied-upon references are prior art to the ’839
`patent because that challenged patent is not entitled to a priority date earlier
`than the dates of Petitioner’s references. See id. at 18–19.
`
`On January 8, 2020, the District Court conducted a claim construction
`(“Markman”) hearing. Ex. 2001. On January 28, 2020, the District Court
`issued a claim construction order. Ex. 2002. The Court’s reasoning is set
`forth in the transcript of the claim construction hearing (Ex. 2001). See
`Ex. 2002 (“For the reasons articulated during the Markman hearing held on
`January 8, 2020, the Court adopts the following constructions.”). In that
`Order, the court construed the directly-injected-fuel phrases as “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,” as asserted by
`Petitioner. See id. at 1; see also id. at 2 (adopting the same construction for
`the fuel of the “direct injection” and “direct fuel injection” recitations of
`certain claims).
`
`On February 3, 2020, Patent Owner filed a Preliminary Response in
`the instant case (IPR2020-00013). Patent Owner filed, concurrently with its
`Preliminary Response, the District Court’s Claim Construction Order and
`the corresponding Markman hearing transcript. See Ex. 2001, 2002; see also
`Prelim. Resp. 17 (citing both documents). Patent Owner asserts that, for the
`directly-injected-fuel phrase, Petitioner advocated for and convinced the
`
`8
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`IPR2020-00013
`Patent 8,069,839 B2
`
`District Court to adopt a construction that is directly contrary to Petitioner’s
`position in the present Petition. Prelim. Resp. 17.
`
`On February 11, 2020, the District Court entered final judgment in
`favor of Ford Motor Company (the Petitioner here) based on Patent Owner’s
`stipulation of non-infringement in light of the District Court’s Claim
`Construction Order. Ex. 3001, 1. The District Court dismissed without
`prejudice Petitioner Ford’s invalidity defenses. Id. at 2.
`
`Also on February 11, 2020, Patent Owner filed a Notice of Appeal to
`the United States Court of Appeals for the Federal Circuit, appealing the
`District Court’s Claim Construction Order. Ex. 3002.
`
`III. ANALYSIS OF THE PATENTABILITY CHALLENGES
`A. Principles of Law
`Petitioner bears the burden of persuasion to prove unpatentability of
`
`the claims challenged in the Petition, and that burden never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015).
`
`“To be entitled to a parent’s effective filing date, a continuation must
`comply with the written description requirement of 35 U.S.C. § 112, ¶ 1.”
`In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013) (citations omitted).
`
`The test for sufficiency of the written description “is whether the
`disclosure of the application relied upon reasonably conveys to those skilled
`in the art that the inventor had possession of the claimed subject matter as of
`the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
`(Fed. Cir. 2010) (en banc).
`
`The written description analysis is a two-step process. The scope of
`the claimed subject matter must be ascertained through the performance of a
`
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`IPR2020-00013
`Patent 8,069,839 B2
`
`proper claim construction before comparing that claimed subject matter to
`the relied-upon disclosure. See In re Katz Interactive Call Processing
`Patent Litig., 639 F.3d 1303, 1319 (Fed. Cir. 2011) (“[C]laim construction is
`inherent in any written description analysis.”); 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.”); id. (“On remand, the district court must
`construe the term ‘impedance-compensated defibrillation pulse’ in light of
`the ’751 patent written description and then determine whether the Owen
`application’s written description satisfies § 112, ¶ 1.”).
`
`In an inter partes review requested in a petition filed on or after
`November 13, 2018—like the instant Petition—we apply the same claim
`construction standard used in district courts, namely that articulated in
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See
`37 C.F.R. § 42.100(b) (2019). In applying that standard, claim terms
`generally are given their ordinary and customary meaning as would have
`been understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. Phillips, 415
`F.3d at 1312–13. “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d
`at 1312–17).
`
`The claim construction rule for inter partes reviews provides that
`“[a]ny prior claim construction determination concerning a term of the claim
`
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`IPR2020-00013
`Patent 8,069,839 B2
`
`in a civil action . . . that is timely made of record in the inter partes review
`proceeding will be considered.” 37 C.F.R. § 42.100(b).
`
`Petitioner’s Challenges
`B.
`The Petition frames the dispositive issue in this case as whether the
`
`challenged claims have written description support in the parent applications
`of the ’839 patent.6 See Pet. 7–8. Specifically, Petitioner contends that the
`challenged ’839 patent is not entitled to an effective filing date earlier than
`that of Petitioner’s relied-upon references of its present challenges. See
`Pet. 2, 8 (Petitioner arguing that, “[b]ecause the ’839 Patent’s parent
`applications do not provide written description support for Patent Owner’s
`overbroad claims to a single fuel system, the ’839 Patent is not entitled to its
`earliest claimed priority date.”). In advancing this contention, Petitioner
`“adopts” a particular construction for purposes of this inter partes review
`and then argues that claims having that construction lack written description
`support in the parent applications of the ’839 patent. Id. at 7–8. Those
`parent applications consist of a string of continuations dating back to
`November 18, 2004. Ex. 1101, 1:5–10; see Pet. 8; Prelim Resp. 10–11.
`
`As mentioned above, a written description determination requires two
`steps; first, the proper construction of the claims must be ascertained and,
`
`
`6 Although Petitioner purports to argue that it is the parent applications that
`lack written description support, Petitioner’s arguments refer to what it
`labels the “common specification,” which includes the specification of the
`challenged ’839 patent, and Petitioner repeatedly cites to the challenged
`patent in its analysis. See, e.g., Pet. 9 n.5 (“For convenience, citations to the
`common specification will be made to the specification of the ’839 Patent
`(Ex. 1101).”). To the extent that Petitioner seeks a ruling from us as to
`whether the ’839 patent itself provides written description support for the
`challenged claims, we need not and do not reach that issue.
`11
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`IPR2020-00013
`Patent 8,069,839 B2
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`second, the properly construed claims are compared to the written
`description of the relevant application. Accordingly and under the particular
`circumstances of this case, we would need to arrive at the proper claim
`construction before turning to the written description of the parent
`applications. We look to the Petitioner—the party that, at this stage, bears
`the burden of demonstrating a reasonable likelihood of prevailing—to assist
`us in our claim construction analysis by showing us why its proposed
`construction should be applied in the second step. Petitioner, however, skips
`the first step of the written description determination, that of a proper claim
`construction analysis, and leaps immediately to the second step.
`
`Petitioner merely “adopts,” for the challenged claims’ recited direct
`injection fuel terms, what it characterizes as Patent Owner’s construction in
`the related district court litigation. Pet. 6–7. Specifically, Petitioner asserts
`that the claim construction to be applied in this inter partes review is broad
`enough to encompass the accused engines of the related litigation,
`contending that “the challenged claims should be construed to be broad
`enough to include a system using DI [direct injection] and PI [port injection]
`of the same fuel from the same fuel source.” Id. at 7 (citing Ex. 1103 ¶ 100;
`Ex. 1145 (“Plaintiffs’ Opening Claim Construction Brief” in the related
`litigation), 16–19). The cited portion of Dr. Clark’s testimony also is merely
`an adoption of a construction. See Ex. 1103 ¶ 100 (“For the purposes of my
`report, I adopt what I understand to be Patent Owner’s construction . . . . I
`also adopt Patent Owner’s implicit construction . . . .”).
`
`12
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`IPR2020-00013
`Patent 8,069,839 B2
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`Petitioner does not direct our attention to any intrinsic evidence in
`
`support of the correctness of its proposed construction.7 See Pet. 6–7
`(providing the Petition’s claim construction section for “Port Fuel Injection”
`/ “Direct Injection”). To the contrary, much of the Petition is dedicated to
`arguments as to why the “common specification,” with several citations to
`the specification of the challenged patent, does not support such a broad
`single-fuel construction. See, e.g., id. at 12–16 (citing, inter alia, Ex. 1101,
`the ’839 patent); id. at 13 (“The ‘Detailed Description’ also demonstrates
`that the common specification does not encompass a single fuel system.”).
`Petitioner argues that there is a “lack of disclosure in the specification and
`the ’033 Patent prosecution history”8 for its adopted construction. Id. at 7
`(citing Ex. 1121, 88–90, 129; Ex. 1103 ¶¶ 98–99). Petitioner appears to go
`so far as to assert that its proposed construction is inconsistent with the
`specification of the challenged patent. See id. at 15 (arguing that “[t]he
`common specification disparages the use of a single fuel” and citing
`Ex. 1101 (the ’839 patent)); see also Ex. 1103 ¶ 112 (Dr. Clark opining as to
`
`
`7 The Board’s Trial Practice Guide, as of the filing date of the Petition,
`states: “If a petitioner believes that a claim term requires an express
`construction, the petitioner must include a statement identifying a proposed
`construction of the particular term and where the intrinsic and/or extrinsic
`evidence supports that meaning.” Trial Practice Guide Update (July 2019),
`13, available at https://www.uspto.gov/sites/default/files/documents/trial-
`practice-guide-update3.pdf; see also Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (Nov. 2019), 44–45, available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated (same).
`8 The “’033 Patent” is a reference to U.S. Patent No. 7,314,033 B2, which
`issued from the earliest filed related application cited in the ’839 patent. See
`Pet. 8 (referring to “the ultimate parent of the ’839 Patent”); Ex. 1101, 1:9–
`10.
`
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`IPR2020-00013
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`what the specification of the ’839 patent allegedly fails to support and
`disparages).
`
`Further, complicating matters is that Petitioner argued to the District
`Court that the broad construction it now asks us to adopt is incorrect, and the
`District Court, subsequent to the filing of the Petition in this case, agreed
`with Petitioner. Ex. 2001, 5 (Markman hearing transcript page 16
`containing Petitioner Ford’s argument), 6 (transcript pages 19–20; the
`District Court agreeing with and adopting Ford’s litigation construction),
`Ex. 2002, 2 (Claim Construction Order); see also Ex. 1144, 6 (Petitioner’s
`proposed litigation construction where the DI and PI fuels must be
`different). The District Court rejected the single-fuel construction and ruled
`that the proper construction is narrower, holding that the claims require that
`the directly injected fuel be different from that of the port injected fuel. See
`Ex. 2002, 2; see also Ex. 2001, 4 (Markman hearing transcript, 12:14–15
`(Patent Owner referring to “a single gasoline embodiment as we’re
`contemplating here.”)). Thus, in order for us to rule in Petitioner’s favor in
`this inter partes review, we would have to issue a preliminary claim
`construction ruling directly opposite that of the District Court. Petitioner, by
`opting to avoid advocating before us that its adopted construction is the
`proper one and in not pointing to evidence supporting that construction,
`gives us nothing upon which to base such a contrary claim construction. In
`order for Petitioner to prevail at this stage, we would have to draft a claim
`construction analysis without any help from Petitioner, the party asking us to
`rule favorably on its challenges utilizing that construction, and we would
`have to apply a construction at odds with that arrived at by the District Court
`and for which Petitioner successfully advocated.
`
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`In light of the above and in the particular circumstances of this case,
`
`we determine that Petitioner has not explained adequately why its adopted
`construction is proper and, thus, has not demonstrated a reasonable
`likelihood of prevailing on its assertion that claims having such scope lack
`written description support in the parent applications or its related assertion
`that the challenged patent is not entitled to a priority date earlier than the
`relied-upon references. By extension, Petitioner has not demonstrated a
`reasonable likelihood of prevailing on its challenges based on anticipation
`by those relied-upon references. We need not and do not reach the issue of
`whether the challenged claims have written description support in earlier
`filed applications.
`
`IV. DISCRETION UNDER 35 U.S.C. § 314(a)
`The Board has discretion not to institute an inter partes review.
`
`See 35 U.S.C. § 314(a) (authorizing institution of an inter partes review
`under particular circumstances, but not requiring institution under any
`circumstances); 37 C.F.R. § 42.108(a) (stating “the Board may authorize the
`review to proceed”) (emphasis added); Harmonic Inc. v. Avid Tech, Inc.,
`815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that, under § 314(a), “the
`PTO is permitted, but never compelled, to institute an IPR proceeding”); see
`also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.”). In determining whether to exercise our discretion not
`to institute a trial, we consider that the America Invents Act was “designed
`to establish a more efficient and streamlined patent system that will improve
`patent quality and limit unnecessary and counterproductive litigation costs.”
`H.R. REP. NO. 112-98, pt. 1, at 40 (2011).
`
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`The state of any parallel district court litigation can weigh on whether
`
`we exercise our discretion under § 314(a) to not institute trial. See, e.g.,
`NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20
`(PTAB Sept. 12, 2018) (precedential) (“Accordingly, we find that the
`advanced state of the district court proceeding is an additional factor that
`weighs in favor of denying the Petition under § 314(a).”). Also, any
`potential conflict between a proceeding at the Board and the Federal Circuit
`may weigh against our instituting trial in that proceeding. See, e.g., Comtech
`Mobile Datacom Corp. v. Vehicle IP, LLC, IPR2018-00531, Paper 9 at 12
`(PTAB July 20, 2018) (exercising discretion not to institute trial for a
`proceeding with the parallel litigation on appeal to the Federal Circuit over
`claim construction, stating: “Were we to construe the term ‘dispatch,’ we
`would be deciding a disputed legal issue that is already currently before our
`reviewing court for resolution.”). For the reasons presented below, we
`determine that the facts in this proceeding weigh in favor of us exercising
`our discretion under § 314(a) to deny the Petition.
`
`The Board’s precedential decision in NHK also informs our discretion
`here, as the facts in that proceeding are similar to the facts here. In NHK, the
`Board determined that the petition in that proceeding should be denied under
`35 U.S.C. § 325(d). NHK, Paper 8 at 11–18. The Board then considered
`whether § 314(a) provides an additional, independent reason for not
`instituting trial. NHK, Paper 8 at 19–20; see, e.g., id. at 20 (“Thus, simply
`because we . . . deny the Petition under § 325(d) does not mean that we
`cannot consider and weigh additional factors that favor denying institution
`under § 314(a)”). The Board then found that the advanced state of the
`litigation provided an additional basis for not instituting trial. Id. at 20.
`
`16
`
`

`

`IPR2020-00013
`Patent 8,069,839 B2
`
`In the instant case, the parallel district court litigation involving the
`
`’839 patent has terminated.9 Ex. 3001. The District Court adopted
`Petitioner’s claim construction argument that the asserted claims required an
`anti-knock agent different from the port injected gasoline fuel. Ex. 2002, 1–
`2. This construction led to a stipulation that Petitioner did not infringe
`the ’839 patent, which led to a final judgment that allowed Patent Owner to
`appeal the court’s claim construction to the Federal Circuit. See Exs. 3001,
`3002. The District Court’s construction is contrary to the construction
`Petitioner proposes in the Petition.
`
`At the heart of the party’s dispute (and, presumably, Patent Owner’s
`appeal) is whether the asserted claims require an anti-knock agent different
`from the port injected gasoline fuel. That is, the Federal Circuit will
`determine whether the scope of the challenged claims encompasses a “single
`fuel” system—a legal issue dispositive of the grounds in this Petition.10 If
`the Federal Circuit affirms the District Court’s construction, then, should we
`institute trial, an underlying basis for that institution would be incorrect. In
`that situation, a trial would waste the Board’s and the parties’ resources. As
`such, the trial would be contrary to Congress’s intent for AIA proceedings,
`as the trial would not “establish a more efficient and streamlined patent
`system that will improve patent quality and limit unnecessary and
`counterproductive . . . costs.” H.R. REP. 112-98, pt. 1, at 40 (2011).
`
`
`9 Petitioner characterizes the parallel litigation as being in “[t]he early
`stage.” Pet. 52. Petitioner made this characterization before the District
`Court entered its claim construction and final judgment orders.
`10 As we discussed above in our analysis of the merits of Petitioner’s
`contentions, determining the proper scope of a claim is the initial step in
`analyzing whether that claim has written description support.
`17
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`

`

`IPR2020-00013
`Patent 8,069,839 B2
`
`Complicating the situation is that the Board now applies the same
`
`claim construction standard as a district court. See 37 C.F.R. § 42.100(b)
`(2019). Accordingly, if we adopt Petitioner’s claim construction position,
`we would employ a construction at odds with the construction adopted in the
`District Court under the same claim construction standard. Also, as we
`discuss in detail above in connection with our analysis of the merits of
`Petitioner’s grounds, Petitioner provides us with no basis to not favorably
`consider the District Court’s construction other than the assertion that the
`proposed construction comports with Patent Owner’s infringement theory.
`See Pet. 6–7 (“Accordingly, Petitioner adopts Patent Owner’s broad
`construction for the 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.”); 37 C.F.R. § 42.100(b) (2019)
`(“Any prior claim construction determination concerning a term of the claim
`in a civil action . . . that is timely made of record in the inter partes review
`proceeding will be considered.”). That is, Petitioner does not provide any
`supporting arguments or evidence as to the merits of the proposed claim
`construction.
`
`In effect, Petitioner asks us to bypass any claim construction analysis,
`so that we may decide the patentability of the challenged claims under
`Petitioner’s alternative litigation theory. Petitioner prevailed on its primary
`theory in the litigation. That decision relegates any trial we may institute to
`an advisory proceeding on Petitioner’s alternative theory, rather than on a
`proper analysis of the scope and priority date of the challenged claims.
`
`For these reasons, we determine that the facts in this proceeding
`weigh in favor of us exercising our discretion under 35 U.S.C. § 314(a) to
`
`18
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`

`

`IPR2020-00013
`Patent 8,069,839 B2
`
`not institute trial, thus providing an additional reason to our analysis of the
`merits of Petitioner’s contentions to deny the Petition.11
`
`V. CONCLUSION
`Petitioner has not demonstrated a reasonable likelihood of prevailing
`
`in showing the unpatentability of at least one of the challenged claims of
`the ’839 patent. Additionally, for the reasons explained above, we exercise
`our discretion under 35 U.S.C. § 314(a) to not institute a trial.
`
`VI. ORDER
`For the foregoing reasons, it is
`ORDERED that that the Petition is denied and no trial is instituted.
`
`
`
`
`
`
`
`11 Petitioner provides an analysis of the factors presented in the Board’s
`precedential decision in General Plastic Indus. Co. v. Canon Kabushiki
`Kai