UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY
`Petitioner
`v.
`ETHANOL BOOSTING SYSTEMS, LLC, and MASSACHUSETTS INSTITUTE
`OF TECHNOLOGY,
`Patent Owner
`____________
`
`Case: IPR2020-00013
`U.S. Patent No. 8,069,839
`____________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §312 AND 37 C.F.R. §42.104
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`

`

`V.
`
`TABLE OF CONTENTS
`LIST OF EXHIBITS ............................................................................................... v
`I.
`GROUNDS FOR STANDING UNDER 37 C.F.R. §42.104(a) ................. 1
`II.
`PAYMENT OF FEES .................................................................................. 1
`III. OVERVIEW OF CHALLENGES AND RELIEF REQUESTED ........... 1
`IV. BACKGROUND ........................................................................................... 2
`A.
`THE ’839 PATENT .................................................................................... 2
`B.
`’839 PATENT PROSECUTION HISTORY ..................................................... 2
`C.
`CLAIM CONSTRUCTION (37 C.F.R. §42.104(B)(3)) .................................. 4
`D.
`PRIORITY DATE ....................................................................................... 7
`PRIOR ART REFERENCES .................................................................... 18
`A. U.S. PATENT NO. 7,225,787 (“BROMBERG”) .........................................18
`B. U.S. PATENT NO. 7,694,666 (“LEWIS”) .................................................19
`VI. LEVEL OF ORDINARY SKILL IN THE ART ..................................... 20
`VII. HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE ........ 20
`A. GROUND 1: CLAIMS 1-8 ARE ANTICIPATED BY BROMBERG ....................20
`B. GROUND 2: CLAIMS 1-8 ARE ANTICIPATED BY LEWIS ............................36
`C. NO GROUND IS REDUNDANT ..................................................................51
`D. DISCRETION TO INSTITUTE .....................................................................52
`VIII. CONCLUSION ........................................................................................... 58
`IX. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 .............................. 58
`A. REAL PARTY IN INTEREST UNDER 37 C.F.R. §42.8(B)(1) ......................58
`B.
`RELATED MATTERS UNDER 37 C.F.R. §42.8(B)(2) ...............................58
`C. DESIGNATION OF COUNSEL UNDER 37 C.F.R. §42.8(B)(3) ....................60
`D.
`SERVICE INFORMATION..........................................................................61
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`3Shape A/S v. Align Tech., Inc.,
`IPR2019-00156, Paper 9 (PTAB June 11, 2019) ............................................... 53
`3Shape A/S v. Align Tech., Inc.,
`IPR2019-00160, Paper 9 (PTAB June 11, 2019) ............................................... 53
`Apple, Inc. v. UUSI, LLC,
`IPR2019-00358, Paper 12 (PTAB Aug 5, 2019) ................................................ 54
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 19
`Ethanol Boosting Systems, LLC et al v. Ford Motor Company, LLC,
`Case No. 1:19-cv-00196-CFC (Del. Dist. Ct.) ................................................... 58
`General Plastic Indus. Co. v. Canon,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ......................................... 52-56
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .......................................................................... 17
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 4
`Reckitt Benckiser LLC v. Ansell Healthcare Products LLC,
`IPR2017-00063, Paper No. 38 (PTAB Jan. 30, 2018) ......................................... 8
`Smith & Nephew, Inc. v. Arthrex, Inc.,
`IPR2017-00275, Paper No. 36 (PTAB May 2, 2018) .................................. 15, 17
`Uniden America Corp. v. Escort Inc.,
`IPR2019-00724, Paper 6 (PTAB Sep. 17, 2019) ................................................ 57
`VLSI Technology LLC v. Intel Corporation,
`C.A. No. 18-966-CFC, D.I. 136 (D.Del. Apr. 22, 2019) ................................... 52
`
`iii
`
`

`

`STATUTES
`35 U.S.C. § 102(b) (pre-AIA) ........................................................................ 2, 18-19
`35 U.S.C. § 102(e) (pre-AIA) .............................................................................. 2, 19
`35 U.S.C. §112 ..................................................................................................... 5, 19
`35 U.S.C. §282(b) ...................................................................................................... 4
`35 U.S.C. §§311–319 ................................................................................................. 1
`35 U.S.C. § 314(a) ............................................................................................. 52-53
`35 U.S.C. § 325(d) ............................................................................................. 52-53
`OTHER AUTHORITIES
`37 C.F.R. §42 ............................................................................................................. 1
`37 C.F.R. § 42.8 ....................................................................................................... 58
`37 C.F.R. §42.8(b)(1) ............................................................................................... 58
`37 C.F.R. §42.8(b)(2) ............................................................................................... 58
`37 C.F.R. §42.8(b)(3) ............................................................................................... 60
`37 C.F.R §42.10(b) .................................................................................................. 61
`37 C.F.R. § 42.22(a)(1) .............................................................................................. 1
`37 C.F.R. §42.104(a) .................................................................................................. 1
`37 C.F.R. § 42.104(b)(1)–(2) ..................................................................................... 1
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 4
`Office Trial Practice Guide July 2019 Update ......................................................... 54
`
`iv
`
`

`

`LIST OF EXHIBITS
`
`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1101
`
`’839 Patent
`
`U.S. Patent No. 8,069,839
`
`Ex. 1102
`
`’839 File History File History of U.S. Patent No. 8,069,839
`
`Ex. 1103
`
`Ex. 1104
`
`Ex. 1105
`
`Ex. 1106
`
`Ex. 1107
`
`Ex. 1108
`
`Ex. 1109
`
`Ex. 1110
`
`Ex. 1111
`
`Ex. 1112
`
`Ex. 1113
`
`Ex. 1114
`
`Ex. 1115
`
`Ex. 1116
`
`Ex. 1117
`
`Clark
`Declaration
`
`Declaration of Dr. Nigel N. Clark under 37
`C.F.R. §1.68
`
`Clark CV
`
`Curriculum Vitae of Dr. Nigel N. Clark
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`Ex. 1118
`
`’572 File History File History of U.S. Patent No. 7,971,572
`
`v
`
`

`

`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1119
`
`’233 File History File History of U.S. Patent No. 7,762,233
`
`Ex. 1120
`
`’004 File History File History of U.S. Patent No. 7,740,004
`
`Ex. 1121
`
`’033 File History File History of U.S. Patent No. 7,314,033
`
`Ex. 1122
`
`Complaint
`
`Ex. 1123
`
`Defendant’s
`Answer
`
`Ex. 1124
`
`Plaintiff’s
`Answer
`
`Ex. 1125
`
`Heywood
`
`Complaint for Patent Infringement, Ethanol
`Boosting Sys LLC v. Ford Motor Co., D.I. 1,
`C.A. No. 19-cv-196-CFC (D. Del. Jan. 30,
`2019)
`
`Defendant’s Answer, Defenses,
`Counterclaims and Jury Demand, Ethanol
`Boosting Sys LLC v. Ford Motor Co., D.I. 8,
`C.A. No. 19-cv-196-CFC (D. Del. March 25,
`2019)
`
`Answer to Defendant’s Counterclaims,
`Ethanol Boosting Sys LLC v. Ford Motor
`Co., D.I. 12, C.A. No. 19-cv-196-CFC (D.
`Del. April 15, 2019)
`
`John B. Heywood, Internal Combustion
`Engine Fundamentals (1988)
`
`Ex. 1126
`
`’735 File History File History of U.S. Patent No. 8,082,735
`
`Ex. 1127
`
`Ex. 1128
`
`Ex. 1129
`
`Ex. 1130
`
`Ex. 1131
`
`’157 File History File History of U.S. Patent Application No.
`11/758,157
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`vi
`
`

`

`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1132
`
`Ex. 1133
`
`Ex. 1134
`
`Ex. 1135
`
`Ex. 1136
`
`Ex. 1137
`
`Ex. 1138
`
`Ex. 1139
`
`Ex. 1140
`
`Ex. 1141
`
`Ex. 1142
`
`Ex. 1143
`
`Ex. 1144
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`’100 File History File History of U.S. Patent Application No.
`15/463,100
`
`Infringement
`Contentions
`
`MIT’s/EBS’s Preliminary Infringement
`Chart (Ex. A – U.S. Patent No. 8,069,839),
`Ethanol Boosting Sys LLC v. Ford Motor
`Co., D.I. 35, C.A. No. 19-cv-196-CFC (D.
`Del. July 1, 2019)
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`Bromberg
`
`U.S. Patent No. 7,225,787
`
`Lewis
`
`U.S. Patent No. 7,694,666
`
`RESERVED
`
`RESERVED
`
`National
`Petroleum
`Council
`
`National Petroleum Council, U.S. Petroleum
`Refining: Meeting Requirements for Cleaner
`Fuels and Refineries (Washington, DC,
`August 1993) Appendix L.
`
`Joint Claim
`Construction
`Chart
`
`Joint Claim Construction Chart, Ethanol
`Boosting Sys LLC v. Ford Motor Co., D.I.
`67, C.A. No. 19-cv-196-CFC (D. Del.
`September 24, 2019)
`
`vii
`
`

`

`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1145
`
`Patent Owner’s
`Claim
`Construction
`Brief
`
`Plaintiffs’ Opening Claim Construction
`Brief, Ethanol Boosting Sys LLC v. Ford
`Motor Co., C.A. No. 19-cv-196-CFC (D.
`Del. October 9, 2019)
`
`Ex. 1146
`
`’289 Application U.S. Patent Application No. 11/291,289
`
`viii
`
`

`

`Ford Motor Company (“Petitioner”) petitions for Inter Partes Review
`
`(“IPR”) under 35 U.S.C. §§311–319 and 37 C.F.R. §42 of 1-8 (“the challenged
`
`claims”) of U.S. Patent No. 8,069,839 (“the ’839 Patent”). Petitioner requests
`
`cancellation of the challenged claims.
`
`I.
`
`GROUNDS FOR STANDING UNDER 37 C.F.R. §42.104(a)
`
`Petitioner certifies that the ’839 Patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting an IPR.
`
`II.
`
`PAYMENT OF FEES
`
`Petitioner authorizes Account No. 16-0605 to be charged for any additional
`
`fees.
`
`III. OVERVIEW OF CHALLENGES AND RELIEF REQUESTED
`
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)–(2), Petitioner requests
`
`cancellation of the challenged claims in view of the grounds set forth below. This
`
`petition provides details on claim construction and where each element is found in
`
`the cited prior art. Additional support is provided in Ex. 1103–Declaration of Nigel
`
`Clark (“Clark”). ¶9 et seq.
`
`The ’839 Patent was filed on May 27, 2011, as U.S. Patent Application No.
`
`13/117,448. Ex. 1102, 9-36. For the reasons outlined below in Section IV(D), the
`
`’839 Patent is not entitled to a filing date earlier than May 27, 2011.
`
`- 1 -
`
`

`

`Ground 1: Claims 1-8 are unpatentable under 35 U.S.C. §102(b) (pre-AIA)
`
`over Bromberg.
`
`Ground 2: Claims 1-8 are unpatentable under 35 U.S.C. §102(b) (pre-AIA)
`
`and 35 U.S.C. §102(e) (pre-AIA) over Lewis.
`
`Bromberg issued on June 5, 2007. Lewis issued on April 13, 2010. Thus, all
`
`of the asserted references constitute prior art under at least pre-AIA 35 U.S.C. §
`
`102(b) with respect to the ’839 Patent.
`
`IV. BACKGROUND
`
`A. The ’839 Patent
`The ’839 Patent describes an engine that relies on an antiknock agent to
`
`eliminate knock, with the antiknock agent being a liquid fuel with a higher octane
`
`number than gasoline (e.g., ethanol) to improve engine efficiency. Ex. 1101, 1:14-
`
`17, 1:66-2:15; Ex. 1103, ¶¶35-51. The ’839 Patent also describes the use of direct
`
`injection and port fuel injection, which are well-known fuel delivery strategies. Ex.
`
`1103, ¶¶30-34.
`
`B. ’839 Patent Prosecution History
`The ’839 Patent was granted from the fifth in a family of U.S. patent
`
`applications. Ex. 1103, ¶53. The U.S. applications are all continuations of U.S.
`
`Application No. 10/991,774 (“the ’774 Application”), filed November 18, 2004.
`
`- 2 -
`
`

`

`The prosecution histories of the ’839 Patent and its ultimate parent, U.S.
`
`Patent No. 7,314,033 (“the ’033 Patent”), which resulted from the ’774
`
`Application, provide useful information regarding claim construction and a general
`
`history of how the challenged claims developed. Ex. 1103, ¶¶53-87.
`
`No Office Actions were issued for the ’839 Patent following Patent Owner’s
`
`submission of two Preliminary Amendments with new claim sets after filing. Ex.
`
`1102, 1-5, 61-65, 73-79.
`
`However, in the ’033 Patent prosecution history, Patent Owner repeatedly
`
`characterized the alleged invention in Examiner Interviews. For example, in
`
`response to the first Office Action, Patent Owner amended Claims 1 and 30 to
`
`emphasize that the fuel/ethanol is a liquid and that DI of the liquid fuel/ethanol is
`
`“for vaporization in the cylinder to provide charge cooling.” Ex. 1121, 83, 85; Ex.
`
`1103, ¶80. In an Interview, the inventors distinguished the Cantwell reference by
`
`arguing that “alkali metal compounds are not a fuel and are not introduced in the
`
`liquid state,” water is not a fuel, and the reference only teaches introducing a
`
`vaporized material rather than a liquid into the combustion chamber, which would
`
`not provide the change-of-state cooling effect. Ex. 1121, 89; Ex. 1103, ¶80. The
`
`inventors distinguished the Krauja reference by arguing that the reference did not
`
`teach an anti-knock agent because it operated on 100% ethanol. Id. To overcome
`
`the Payne reference, the inventors argued that the Examiner had not shown that the
`
`- 3 -
`
`

`

`recitation of “‘any other liquid preparation to suppress auto-ignition’ includes any
`
`liquid fuel” rather than water. Ex. 1121, 90; Ex. 1103, ¶80. Finally, to overcome
`
`the Coakwell reference, the inventors argued that hydrogen peroxide is introduced
`
`to provide free oxygen and “is not itself a fuel.” Id. In the Final Office Action, the
`
`Examiner cited new references, and, in response, Patent Owner identified new
`
`limitations, namely “means for port fuel injection of gasoline from the first source”
`
`and “means for direct fuel injection of liquid denatured alcohol from the second
`
`source,” that distinguish over the prior art. Ex. 1121, 129; Ex. 1103, ¶¶81-82.
`
`Patent Owner also argued that none of the cited references teach the combination
`
`of port fuel injection of gasoline and direct injection of liquid denatured ethanol.
`
`Ex. 1121, 129; Ex. 1103, ¶82. The Examiner agreed, and, after some additional
`
`prosecution, the ’033 Patent was granted. Ex. 1121, 129-91; Ex. 1103, ¶¶82-87.
`
`C. Claim Construction (37 C.F.R. §42.104(b)(3))
`Claim terms are interpreted under the same claim construction standard used
`
`in civil actions under 35 U.S.C. §282(b), including construing the claim in
`
`accordance with the ordinary and customary meaning as understood by a person of
`
`ordinary skill in the art (“POSITA”) under Phillips v. AWH Corp., 415 F.3d 1303
`
`(Fed. Cir. 2005) and its progeny. Petitioner reserves all rights to take different
`
`positions with respect to claim construction in any other proceeding.
`
`- 4 -
`
`

`

`1. “Selected Torque Value” / “Some Value of Torque”
`
`The terms “selected torque value” and “some value of torque” (“selected
`
`torque value”) are used throughout the challenged claims to define one or more
`
`values at which the engine changes operation from reliance on PI alone to reliance
`
`on PI and DI or the engine changes operation from reliance on PI and DI to
`
`reliance on DI alone. See, e.g., Ex. 1101, Claims 1, 7, and 8; Ex. 1103, ¶91. The
`
`“selected torque value” terms, however, are undefined.1 Ex. 1103, ¶92.
`
`“Selected torque value” never appears in the ’839 Patent specification. For
`
`the purposes of this proceeding only, a POSITA, however, would have understood
`
`that torque is a measure of the work performed by the engine, and engine load is a
`
`proportional indicator of torque in the range from minimum torque to maximum
`
`torque.2 Ex. 1103, ¶93. Indeed, the higher the torque, the higher the load, such that
`
`the terms “selected torque value” and “selected load value” would have the same
`
`1 Petitioner reserves the right to assert 35 U.S.C. §112 challenges in the co-pending
`
`litigation.
`
`2 In the parties’ Joint Claim Construction Chart, Petitioner asserted that “[t]orque is
`
`the measure of a turning or rotational force on an object. Torque is calculated by
`
`multiplying force and distance. It is a vector quantity, meaning it has both a
`
`direction and a magnitude.” Ex. 1144, 4-5.
`
`- 5 -
`
`

`

`operational meaning. Id. Indeed, Patent Owner admitted torque and load are the
`
`same. Ex. 1136, 2. Where a first specified value of torque and a second specified
`
`value of torque fall on a torque-speed map, a first percentage of load and a second
`
`percentage of load would similarly fall on a load map. Ex. 1103, ¶93. A POSITA
`
`would understand that a “selected torque value” is a value of torque representative
`
`of engine load. Id. For example, a POSITA would equate moving from one
`
`selected torque value to a different torque value to moving from one load value on
`
`a load map to a different load value on a load map. Id. Patent Owner confirms this
`
`interpretation. See, e.g., Ex. 1136, 2, 4.
`
`Accordingly, Petitioner adopts Patent Owner’s construction that “selected
`
`torque value” should be construed to equate to “selected load value” and mean “a
`
`specified value of torque on a torque-speed map” consistent with the ordinary and
`
`customary meaning of the term. Ex. 1103, ¶¶93-94.
`
`2.
`
` “Port Fuel Injection” / “Direct Injection”
`
`Petitioner also advances a construction of “port injection,” “direct injection,”
`
`and variants thereof. “Port injection” (PI) should be construed to mean “injection
`
`of fuel through a manifold,” and “direct injection” (DI) should be construed to
`
`- 6 -
`
`

`

`mean “injection of fuel into the cylinder,” consistent with their respective ordinary
`
`and customary meanings. 3 Ex. 1103, ¶95.
`
`Notwithstanding the lack of disclosure in the specification and the ’033
`
`Patent prosecution history (Ex. 1121, 88-90, 129, Ex. 1103, ¶¶98-99), in litigation
`
`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 system. Ex. 1122, ¶64; Ex. 1103, ¶100. 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. Ex. 1103, ¶100; see
`
`also Ex. 1145, 16-19.
`
`D. Priority Date
`
`3 The parties’ Joint Claim Construction Chart defines “port injection” / “port fuel
`
`injection” as “injection of fuel into an intake port or intake manifold” and “direct
`
`injection” / “direct fuel injection” as “direct injection of fuel into a cylinder.” Ex.
`
`1144, 2-3. Petitioner preserved its argument 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.” Ex. 1144, 3, n.2.
`
`- 7 -
`
`

`

`In order to broadly assert its patents, Patent Owner has pursued an
`
`aggressive continuation strategy over the last 15 years, apparently abandoning the
`
`original dual fuel, ethanol-based innovation disclosed in the ultimate parent of the
`
`’839 Patent (the ’774 application, which issued as U.S. Patent No. 7,314,033 (“the
`
`’033 Patent”)). Like other cases where the Board has refused to find priority,
`
`Patent Owner expanded the scope of its claims and now asserts that the generic
`
`challenged claims in the ’839 Patent cover a system that relies on PI and DI of the
`
`same fuel (“single fuel system”). In Reckitt Benckiser LLC v. Ansell Healthcare
`
`Products LLC, IPR2017-00063, Paper No. 38 at 14-15 (PTAB Jan. 30, 2018), the
`
`Board found that Patent Owner had overreached in its later continuation
`
`application because “none of [the parent] applications describes the full scope of
`
`the claims” and therefore the claims were not entitled to an earlier priority date.
`
`Because 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.
`
`- 8 -
`
`

`

`The patents in the ’839 Patent family4 share a common specification5
`
`directed to a dual fuel system using both gasoline and a separate anti-knock agent,
`
`such as ethanol. Consistent with the disclosure in the specification, the issued
`
`claims of the parent ’033 Patent expressly require separate fuels. See, e.g., Ex.
`
`1121, 124 (“port fuel injection of gasoline from a first source in addition to direct
`
`fuel injection of liquid denatured ethanol from a second source”). Patent Owner
`
`made clear during prosecution of the parent ’774 application that “the present
`
`technology” requires two separate fuels. Ex. 1103, ¶103; Ex. 1121, 88
`
`(summarizing an examiner interview where an inventor explained “that the knock
`
`limit in a gasoline engine can be greatly extended by the direct injection of an
`
`4 See Ex. 1103, ¶¶53-87, 101.
`
`5 Except for cover pages, continuity information, and claim language, the
`
`specification of each of the ’033 Patent and the ’839 Patent is almost identical to
`
`each other and to the other applications to which the ’839 Patent claims priority.
`
`See Ex. 1103, ¶¶101-102; see generally Exs. 1101-1102, 1118-1121. This
`
`specification will be referred to herein as the “common specification.” For
`
`convenience, citations to the common specification will be made to the
`
`specification of the ’839 Patent (Ex. 1101).
`
`- 9 -
`
`

`

`appropriate liquid fuel anti-knock agent such as ethanol” and “pointed out that in
`
`order to achieve commercial attractiveness it is important to obtain a large knock
`
`suppression effect in order to justify the inconvenience of using two tanks and two
`
`fuels”); id., 89 (distinguishing a prior art reference, U.S. Patent No. 4,721,081 to
`
`Krauja, as disclosing only a single fuel system); id., 90.
`
`Subsequently, Patent Owner began drafting claims in its later continuation
`
`applications in an attempt to broadly cover single fuel systems, systems using only
`
`a single fuel from a single source, such as gasoline containing ethanol as described
`
`and distinguished in the “Background” of the ’839 Patent.6 Ex. 1101, 1:42-50 (“It
`
`6 Patent Owner attempted a similar amendment strategy during prosecution of
`
`indirectly related Application No. 15/463,100 (“’100 application”), but the
`
`Examiner rejected Patent Owner’s attempt to claim priority based on a single fuel
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`system: “Applicant has not complied with one or more conditions for receiving the
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`benefit of an earlier filing date under 35 U.S.C. 119(e) as follows: . . . The claims
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`do not overlap in scope since the current claims of the Applicant are much
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`broader and do not require alcohol-based fuel and amount of fuel as required in
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`the previous claims of the cited applications.” Ex. 1135, 186-187 (emphasis
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`added). In response, Patent Owner abandoned the ’100 application.
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`is known to replace a portion of gasoline with small amounts of ethanol added at
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`the refinery … but the small amounts of ethanol that have heretofore been added to
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`gasoline have had a relatively small impact on engine performance.”); see also id.,
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`4:37-46 (contrasting “the present use of ethanol as an additive to gasoline at the
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`refinery”). Single fuel system claims first appeared during prosecution of the
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`application that resulted in the ’839 Patent.7 Ex. 1103, ¶¶120-124; Ex. 1102, 61-65.
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`Similar new matter was added to the claims of each successive patent application
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`in the priority chain. The common specification does not support single fuel system
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`claims and was never amended to provide written description support for these
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`single fuel claims.8 Ex. 1103, ¶123.
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`7 Although Petitioner denies that the claim language in the ’839 Patent provides
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`sufficient written description support for the single fuel system in the challenged
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`claims, each reference relied on in this petition is prior art based on a May 27,
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`2011 priority date.
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`8 In a continuation-in-part of the ’033 Patent, Patent Owner determined it was
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`necessary to supplement the specification to state “using gasoline in the ethanol
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`system with gasoline direct injection (GDI), while at the same time port-fuel
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`injecting a fraction of the gasoline,” but no such disclosure is found in the common
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`specification. See Ex. 1140, 12:8-15.
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`1. The Common Specification Does Not Provide Written
`Description for a Single Fuel System
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`The common specification is directed entirely to a fuel management system
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`for a “gasoline” engine that also directly injects “an anti-knock agent such as
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`ethanol” to increase the efficiency of the engine. Ex. 1101, Abstract. The common
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`specification makes clear that using a separate anti-knock agent in a gasoline
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`engine is critical to the invention. Ex. 1103, ¶¶103-106. “This invention relates to
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`spark injection gasoline engines utilizing an antiknock agent which is a liquid fuel
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`with a higher octane number than gasoline such as ethanol to improve engine
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`efficiency.” Ex. 1101, 1:14-17. Due to the cost and limited availability of ethanol
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`(an anti-knock agent), “[a]n object of the present invention is to minimize the
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`amount of ethanol or other anti-knock agent that is used to achieve a given level of
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`engine efficiency increase” and “the amount of ethanol that is required can be
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`limited to a relatively small fraction of the fuel used by the spark ignition gasoline
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`engine.” Id., 1:54-62 (emphasis added). The “present invention” is therefore
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`directed to a fuel management system that uses both a fuel (e.g., gasoline) and a
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`separate anti-knock agent (e.g., ethanol). Ex. 1103, ¶106; Research Corp., 627
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`F.3d at 871-872 (“These references to ‘the present invention’ strongly suggest that
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`the claimed invention is limited to [those features].”).
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`Although the common specification aims to minimize the amount of anti-
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`knock agent used, nothing in the common specification discloses to a POSITA a
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`fuel system that eliminates the directly injected anti-knock agent entirely. Id.; Ex.
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`1101, 1:56-62. For example, the “Summary” consistently describes the invention
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`as including both gasoline and an anti-knock agent. Ex. 1103, ¶109; Ex. 1101,
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`1:66-2:40. The common specification relies on the vaporization in the cylinder
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`from DI of the anti-knock agent to provide a charge cooling effect to improve
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`knock resistance. Ex. 1103, ¶107; Ex. 1103, 2:8-12. The “Detailed Description”
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`also demonstrates that the common specification does not encompass a single fuel
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`system. Ex. 1103, ¶110. FIG. 1, for example, depicts “direct injection of an anti-
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`knock agent such as ethanol from an ethanol tank 16” and “port fuel injection of
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`the gasoline” “from a gasoline tank 18.” Ex. 1101, 2:63-3:1, 3:23.
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`The disclosed alternatives to the FIG. 1 configuration do not eliminate either
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`the anti-knock agent or fuel. Ex. 1103, ¶111; see, e.g., Ex. 1101, 4:24-28
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`(describing that “[a]lternatively the ethanol and gasoline can be mixed together and
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`the port injected” on board the vehicle but losing air charge cooling benefit); Ex.
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`1101, 5:39-41 (storing ethanol in a separate tank or separating before injection);
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`id., 4:52-54 (“Further decreases in the required ethanol … can be achieved with
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`stratification.”); id., 6:44-46 (“The impact of a small amount of ethanol upon fuel
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`efficiency … can greatly increase the energy value of the ethanol”); id., FIG. 5.
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`The use of blended fuel also does not remove the requirement of a separate
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`anti-knock agent. For example, the anti-knock agent must be kept in a separate
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`tank or otherwise separated from the gasoline to be “used in the invention.” Ex.
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`1103, ¶111; Ex. 1101, 5:39-41 (emphasis added). The common specification also
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`distinguishes anti-knock agents from “gasoline” and gasoline blends. Ex. 1103,
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`¶¶115-119. The common specification lists exemplary anti-knock agents as
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`“methanol . . . tertiary butyl alcohol, or ethers such as methyl tertiary butyl ether
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`(MTBE), ethyl tertiary butyl ether (ETBE), or tertiary amyl methyl ether
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`(TAME).” Ex. 1101, 2:12-13, 6:60-67. Gasoline and components normally found
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`in petroleum-based gasoline (e.g., aromatics) are not listed. Ex. 1103, ¶116. A
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`POSITA would have understood that when these anti-knock agents are compared
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`to gasoline, they have higher octane numbers and higher heats of vaporization. Ex.
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`1103, ¶¶115-119; Ex. 1101, 2:8-12, 1:43-45, 3:28-41. Finally, the POSITA would
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`have understood that the listed anti-knock agents consist solely of oxygenated
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`species and that petroleum-based gasoline, even if it includes ethanol, does not
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`solely consist of an oxygenated species. Ex. 1103, ¶116.
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`The common specification disparages the use of a single fuel, opting instead
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`for the use of a separate anti-knock agent. See Smith & Nephew, Inc. v. Arthrex,
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`Inc., IPR2017-00275, Paper No. 36 at 35 (PTAB May 2, 2018) (finding lack of
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`entitlement to priority date where “the specification is unambiguous in describing
`
`the disadvantages of the suture loop in impeding sliding and stating that the
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`invention allows free sliding”). For example, the common specification states that
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`gasoline alone does not have the required octane number. Ex. 1101, 1:33-41. The
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`common specification also admits that is was well known to use gasoline DI9, as in
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`Stokes, but gasoline DI has little impact on engine performance, Ex. 1103, ¶108;
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`Ex. 1101, 3:67-4:2, 1:48-50. Moreover, the common specification discloses
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`combustion stability issues if gasoline was directly injected in addition to the
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`separate anti-knock agent. Ex. 1103, ¶¶103, 108, 112; Ex. 1101, 3:54-57 (“(It is
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`also possible to use direct injection of gasoline as well as direct injection of
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`ethanol. However, under certain conditions there can be combustion stability
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`issues.”) (emphasis added); 3:22-27; 4:60-64. Each these statements underscores
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`the specification’s requirement of a separate anti-knock agent. Ex. 1103, ¶113.
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`9 While the specification refers to gasoline DI as in Stokes, the specification never
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`discloses gasoline DI in the context of a single fuel system that relies on both
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`gasoline DI and gasoline PI.
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`The common specification also states that “it is important that the ethanol
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`vehicle be operable if there is no ethanol on the vehicle.” Ex. 1101, 6:29-31.
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`However, this disclosure likewise fails as it still requires there to be an ethanol
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`system on the vehicle, even if it is not used. Indeed, the common specification
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`notes that the engine does not operate in a normal mode when the ethanol tank is
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`empty noting: “by reducing or eliminating turbocharging capability and/or by
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`increasing spark retard so as to avoid knock.” Ex. 1103, ¶114, Ex. 1101, 6:31-35.
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`In other words, when the vehicle runs out of anti-knock agent, a POSITA
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`considering the specification as a whole and, particularly, the embodiment shown
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`in Figure 5 (illustrating an ethanol tank and a gasoline tank) would have
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`understood the common specification to disclose that the fuel management system
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`should operate in the manner similar to that of a conventional gasoline-only engine
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`(e.g., PI of gasoline) rather than become completely inoperable. Ex. 1103, ¶114,
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`Ex. 1101, 6:39-43, Claim 12 (“[S]park retard is employed so that port fuel
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`injection alone can be used.”). “
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`To the extent Patent Owner intends to rely on any of the originally filed
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`claims to provide written description support, such an argument would likewise
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`fail. Ex. 1103, ¶120. For example, Patent Owner may rely on dependent claim 15
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`of the ’774 application (“original claim 15”) for support.10 Claim 15 recited: “The
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`system of claim 1 wherein the gasoline is directly injected i