Trials@uspto.gov
`571.272.7822
`
`Paper No. 17
`Filed: November 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AM GENERAL LLC,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01050
`Patent 6,148,258
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571.272.7822
`
`Paper No. 17
`Filed: November 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AM GENERAL LLC,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01050
`Patent 6,148,258
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Case IPR2016-01050
`Patent 6,148,258
`
`I.
`
`INTRODUCTION
`
`A. OVERVIEW
`AM General LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1, 9, 11, 12, 17, 18, and 29–31 of
`U.S. Patent No. 6,148,258 (Ex. 1001, “the ’258 patent”). Pet. 1. UUSI,
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim.
`Resp.”) to the Petition. Pursuant to our authorization (Ex. 1012), Petitioner
`filed a reply to Patent Owner’s Preliminary Response (Paper 10, “Reply”),
`and Patent Owner filed a Sur-Reply (Paper 11, “Sur-Reply”).
`Upon consideration of the record to this point, for the reasons
`explained below, Petitioner has demonstrated a reasonable likelihood of
`prevailing with respect to at least one of the challenged claims. We institute
`an inter partes review of claims 1, 11, 12, 17, 18, and 29–31 of the ’258
`patent.
`
`B.
`
`
`RELATED PROCEEDINGS
`The parties indicate that the ’258 patent is at issue in the United States
`Court of Federal Claims (“CoFC”) under 28 U.S.C. § 1498, captioned UUSI,
`LLC, et al. v. United States, Case No. 1:12-cv-00216. Pet. 6; Paper 5, 2.1
`This Petition is part of a family of cases as indicated in the chart
`below.
`
`
`
`1 The pages of this Exhibit are not numbered; we consider the cover page to
`be page 1.
`
`2
`
`
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`Case IPR2016-01050
`Patent 6,148,258
`
`
`inter partes
`review No.
`2016-01050
`
`U.S. Patent No.
`
`Note
`
`Application
`No.
`09/076,291 CIP of ’369 patent
`
`08/931,470 Continuation-in-part
`(CIP) of ’456 patent
`08/042,239 CIP of 08/042,239,
`now abandoned
`08/508,063 CIP of ’666 patent
`
`2016-01048
`
`2016-01049
`
`2016-01051
`
`6,148,258
`(“the ’258 patent”)
`6,009,369
`(“the ’369 patent”)
`5,570,666
`(“the ’666 patent”)
`5,729,456
`(“the ’456 patent”)
`See Prelim. Resp. 18–19; Pet. 11–12.
`As shown above, the ’258 patent is a continuation–in-part of the
`application that matured into the ’369 patent, which is a continuation-in-part
`of the application that matured into the ’456 patent, which is a continuation-
`in-part of the application that matured into the ’666 patent, which is a
`continuation-in-part of application 08/042,239, now abandoned.
`The ’258 patent was filed on May 12, 1998. Ex. 1001, [22].
`
`
`A.
`
`II. PRELIMINARY MATTERS
`STATUTORY BAR UNDER 35 U.S.C. § 315(b)
`Patent Owner argues that the Petition is barred under § 315(b) because
`it was filed more than 1 year after: (1) the United States Government (which
`Patent Owner contends is a privy of Petitioner) was served with a complaint
`in the U.S. Court of Federal Claims (“CoFC”) alleging infringement of the
`
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`’666 patent under 28 U.S.C. § 14982; (2) Petitioner, as an interested party to
`the CoFC proceeding, was served with a Rule 14 Notice/Summons, together
`with a copy of the complaint; (3) the Government and Petitioner both were
`served with an amended complaint in the CoFC proceeding. Prelim. Resp.
`1–18. For the sake of consistency, we rely upon our analysis of this issue in
`the institution decision of IPR2016-01049 and incorporate that analysis
`herein. There we determined that Petitioner does not lack standing under
`§ 315(b). For the same reasons, we determine that Petitioner here also does
`not lack standing under § 315(b).
`
`35 U.S.C. § 325(d)
`Patent Owner contends that the Board has denied institution, where, as
`here, the prior art was presented during prosecution. Prelim. Resp. 48
`(citing Ceramtec Gmbh v. Ceramedic, LLC, Case IPR2015-00424 (PTAB
`July 7, 2015) (Paper 9) and Microboards Tech., LLC v. Stratasys, Inc., Case
`IPR2015-00287 (PTAB May 28, 2015) (Paper 13)).
`Patent Owner’s argument is unpersuasive. Patent Owner does not
`identify the statutory basis of the rejection (i.e., § 102 or § 103) and does not
`identify or provide any portion of the relevant prosecution history. Further,
`the cases cited by Patent Owner are distinguishable. In each of the non-
`
`B.
`
`
`2 See Zoltek Corp. v. United States, 672 F.3d 1309, 1327–28 (Fed. Cir. 2012)
`(en banc) (holding that “28 U.S.C. § 1498(a) creates an independent cause of
`action for direct infringement by the Government or its contractors that is
`not dependent on 35 U.S.C. § 271(a)” and “[w]hen the United States is
`subject to suit under § 1498(a) for alleged infringement of a patent by a
`contractor acting by and for the United States, the contractor by law is
`rendered immune from individual liability for the alleged infringement”).
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`precedential cases cited by Patent Owner, the Board denied a ground of
`unpatentability, in part, because the Examiner had previously considered the
`same or substantially the same argument with regard to a rejection during
`prosecution based on the same prior art. Ceramtec Gmbh, Paper 9, 12;
`Microboards, Paper 13, 7–12. Here, in contrast, the ’258 patent was not
`subject to a rejection based on Auth. See Pet. 11–12, 16–17 (citing the
`applicable portions of the prosecution history (Ex. 1002) and contending that
`the ’258 patent issued following a rejection under 35 U.S.C. § 112(2) and
`two amendments). Patent Owner has not shown that the same or
`substantially the same prior art or argument was previously considered, and
`accordingly we decline to exercise our discretion to deny any ground of
`unpatentability under 35 U.S.C. § 325(d).
`
`
`A.
`
`III. THE CLAIMED SUBJECT MATTER
`THE ’258 PATENT
`The ’258 patent relates to improvements in control, performance,
`diagnostics, monitoring, adaptability, and compensation pertaining to
`glowplugs, starter motor actuation, and battery power application for diesel
`engine applications.3 Ex. 1001, 1:18–23. The invention is used in a self-
`propelled vehicle or other piece of equipment powered by an internal
`combustion engine. Id. at 1:26–29.
`As background, the Specification describes that diesel engines have
`no spark plug or spark ignition. Id. at 1:44–45. Rather, ignition for diesel
`engines relies on adding various amounts of supplemental heat to the
`
`3 The ’258 patent presents this term both as a single word (“glowplug”) and
`as two words (“glow plug”). See, e.g., Ex. 1001, 1:42, 6:17.
`
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`combustion chamber prior to and during engine cranking. Id. at 1:44–63.
`Diesel engine glowplug heaters (“glowplugs”) are one such heat source. Id.
`at 1:63–67.
`Diesel engines having glowplugs are included in a wide variety of
`vehicles (e.g., trucks, buses, infantry vehicles) and glowplug control is of
`vital importance to diesel engine performance. Id. at 1:32–34, 3:4–5.
`Considerable warning and protection equipment must be incorporated into
`glowplug control systems because vehicle operators have a wide range of
`skill levels and improper operation of the glowplugs can lead to a variety of
`problems. Id. at 2:42–3:3; 3:34–37. For example, excessive energization
`time wastes energy, delays engine start, and causes higher temperatures,
`which significantly shortens the life of the glowplugs, and insufficient
`energization can result in lack of engine start, excessive cranking time,
`starter motor wear, undesirable emissions, and increased fuel consumption.
`Id. at 2:1–10; see also Prelim. Resp. 19–22 (describing glowplug technology
`and associated problems with support from the Declaration of Dr. Lequesne
`(Ex. 2001)).
`To overcome these problems, the claimed invention includes
`improved circuitry that incorporates a multiplicity of desirable
`characteristics to implement safe, reliable, and efficient operation of the
`components of a diesel engine electrical control system. Ex. 1001, 3:27–32.
`The preferred embodiment is used with a motor vehicle diesel engine
`having one or more glowplugs 12. This embodiment includes both housing
`70 supported by the motor vehicle, and a connector for routing signals from
`a vehicle mounted power source that energizes the glowplugs. Id. at 6:48–
`55. Figure 3 of the ’258 patent follows:
`
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`Figure 3 is a diagram of an embodiment showing an engine electrical
`starting system (EESS) having a protective control box (PCB) and a
`glowplug controller. Id. at 5:14–17. Monitor circuitry is supported within
`the housing interior to provide an indicator signal corresponding to a voltage
`applied to the one or more glowplugs. Id. at 6:55–58. Programmable
`controller 150 is: supported within the housing interior, coupled to the
`monitor circuity, and produces a control output for supplying energy to the
`glowplugs. Id. at 6:58–61. A switching device supported within the housing
`interior is coupled to the control output from the programmable controller
`and energizes the one or more glowplugs in a controlled time sequence prior
`to initiation of combustion in the diesel engine. Id. at 6:61–65. A signal
`representing alternator speed can be determined from the frequency of the
`alternating component of the voltage at the field coil R tap and may be used
`for load dump protection. Id. at 5:22–28, 8:31–34; Figs. 5, 6C.
`
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`B.
`
`ILLUSTRATIVE CLAIM
`Claim 1 is the sole challenged independent claim and reads as
`follows:
`For use with a motor vehicle diesel engine having one or
`1.
`more glowplugs for maintaining temperature control of one or
`more diesel engine combustion chambers, apparatus comprising:
`a) a starter control housing supported by the motor vehicle
`and including a cable connector for routing energization signals
`into a housing interior from a vehicle mounted power source for
`use in energizing the glowplugs;
`b) monitor circuitry supported within a housing interior for
`providing an indicator signal corresponding to a voltage applied
`to the one or more glowplugs;
`c) a programmable controller supported within the housing
`interior that is coupled to the monitor circuitry and produces a
`control output for supplying energy to the glowplugs;
`d) at least one switching device supported within the
`housing interior that is coupled to the control output from the
`programmable controller for energizing the one or more
`glowplugs in a controlled time sequence prior to, during an/or
`after engine cranking by selectively coupling the energization
`signals to the glowplugs; and
`
`e) load protection circuitry supported within the housing
`interior for temporarily maintaining an alternator to battery
`power correction after removal or an ignition signal until engine
`speed has been reduced to a specified value.
`
`CLAIM INTERPRETATION
`1.
`Applicable standard
`In the Petition, Petitioner contends that the ’258 patent is expired and
`consequently the claim terms should be construed pursuant to the principles
`outlined in Phillips rather than under a broadest reasonable interpretation.
`
`C.
`
`8
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`Pet. 12 (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc). In the Preliminary Response, Patent Owner contends that some
`claims are expired while other are not, and also contends that the prosecution
`history should be consulted. Prelim. Resp. 26.
`In response to these assertions, we directed the parties to specify
`which claims are expired and any relevant portions of the prosecution
`history. See Paper 13. In response, Patent Owner asserts that claims 17 and
`18 recite new matter that is not disclosed in the related parent applications,
`and for that reason, these claims expire on May 12, 2018. Paper 14, 1–4.
`Patent Owner acknowledges that the remaining challenged claims are
`expired. Id. at 4. Petitioner responds that all claims of the ’258 patent
`expired on November 14, 2012, “due to nonpayment of maintenance fee.”
`Paper 15, 1 (citing Ex. 1013).
`Indeed, Exhibit 1013 indicates that the ’258 patent is expired. Thus,
`all of the challenged claims are expired, and accordingly, we interpret the
`challenged claims in a manner similar to that applied by a District Court.
`See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2013). Specifically, claim
`terms are generally given their ordinary and customary meaning, as would
`be understood by a person of ordinary skill in the art at the time of the
`invention, in light of the language of the claims, the specification, and the
`prosecution history of record. Phillips, 415 F.3d at 1313–17. Petitioner’s
`burden of proof remains a preponderance of the evidence. 35 U.S.C.
`§ 316(e).
`For the purposes of this decision, and on this record, we determine
`that only the following claim terms need express interpretation. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`
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`(stating that only those terms that are in controversy need to be construed,
`and only to the extent necessary to resolve the controversy). We emphasize
`that the claim constructions in this Decision are preliminary. During this
`proceeding, the parties may further develop argument and evidence
`regarding claim construction as appropriate.
`2.
`Errors (claims 1, 9, and 17)
`Claims 1, 9, and 17 each appear to include errors. We analyze the
`claims in light of the specification to determine whether correction of these
`errors is subject to reasonable debate. See Novo Indus., L.P. v. Micro Molds
`Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003); see also Apple Inc. v. Achates
`Reference Publ’g, Inc., Case IPR2013-00080, slip op. at 10–12 (PTAB June
`3, 2013) (Paper 224).
`a)
`Claim 1, limitation d
`During prosecution, Patent Owner amended limitation d) of claim 1 to
`read as follows:
`d) at least one switching device [a switching device] supported
`within the housing interior that is coupled to the control output
`so from the programmable controller for energizing the one or
`more glowplugs in a controlled time sequence prior to, during
`and/or after engine cranking [prior to initiation of combustion in
`the diesel engine] by selectively coupling the energization
`signals to the glowplugs; and
`
`
`4 The cited paper is the Institution Decision of the proceeding. The
`proceeding subsequently resulted in a Final Written Decision (June 2, 2014,
`Paper 90) that was appealed to and affirmed by the Federal Circuit on an
`unrelated basis (Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652,
`657–58 (Fed. Cir. 2015) (holding that the Board’s determination on a time-
`bar under 35 U.S.C. § 315(b) was not appealable)).
`
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`Ex. 1002 (file history of the ’258 patent)5, 488–89; see also Ex. 1002, 46
`(original claim). When the ’258 patent issued, the relevant portion of the
`limitation recited, “during an/or after” rather than “during and/or after.” See
`Ex. 1001, 23:49–55. Petitioner and Patent Owner each contend this is a
`typographical error. See Pet. 14; Ex. 10086, Ex. A, 5.7
`In consideration of the claim language and the Specification, for the
`reasons that follow, reading the claim as “and/or” is not subject to reasonable
`debate. First, on its face, the claim language appears to be a typographical
`error in that the term “and/or” is a common term, but the term “an/or” is not.
`Second, as explained above, the claim amendment stated “and/or,” not
`“an/or.” Had the claim been amended to state “an/or,” that change would
`have been reflected in the prosecution history and the absence of such an
`amendment implies the error is inadvertent. Third, “and/or” is consistent
`with another claim. Specifically, independent claim 488 recites “coupling
`the controlled output from the programmable controller to at least one a
`switching device supported within the housing interior for energizing the
`one or more glowplugs in a controlled time sequence prior to during, and/or
`
`
`5 This exhibit is filed in five parts.
`6 Exhibit 1008 is Patent Owner’s claim construction from the related
`litigation.
`7 We note that because an inter partes review is being instituted, Patent
`Owner will have an opportunity to move to amend the claims. See 37 C.F.R.
`§ 42.121(a). Provided a motion is authorized, Patent Owner may also
`correct via a certificate of correction.
`8 Although claim 48 is not challenged in this proceeding, it remains part of
`the disclosure of the ’258 patent. See Laitram Corp. v. Rexnord, Inc., 939
`F.2d 1533, 1538 (Fed. Cir. 1991) (differences among claims can also be a
`useful guide in understanding the meaning of particular claim terms).
`
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`after engine cranking.” Ex. 1001, 28:20–24 (emphasis added). Fourth, such
`interpretation is consistent with the Specification in that the specification
`does not recite the phrase “an/or” or words to that effect.
`Consequently, a person of ordinary skill in the art would understand
`that “an/or” as recited in claim 1 is a typographical error and should be read
`as “and/or.”
`
`Claim 1, limitation e
`b)
`During prosecution, Patent Owner amended limitation e) of claim 1 as
`follows:
`
`e) load protection circuitry supported within the housing
`interior for [maintaining power to current drawing loads of the
`motor vehicle after removal of an ignition signal] temporarily
`maintaining an alternator to battery power correction after
`removal or an ignition signal until engine speed has been reduced
`to a specified value.
`Ex. 1002, 489; see also Ex. 1002, 46 (original claim). The claim issued with
`these changes. Ex. 1001, 23:56–60.
`Petitioner and Patent Owner each contend this claim includes two
`typographical errors and should read as follows:
`load protection circuitry supported within the housing
`interior for temporarily maintaining an alternator to battery
`power [correction] connection after removal [or] of an ignition
`signal until engine speed has been reduced to a specified value.
`See Pet. 15; Prelim. Resp. 29–32, 42.
`In consideration of the claim language and the specification, for the
`reasons that follow, reading “correction” as “connection” and “or” as “of” is
`not subject to reasonable debate. First, on its face, the claim language seems
`to contain an error. The limitation states that the circuitry maintains an
`alternator to battery power correction “after removal,” but does not state
`
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`Patent 6,148,258
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`what is removed. Second, the difference in language is consistent with a
`typographical error. In particular, “correct” and “connect” have the same
`number of letters, and the letters that differ are similar in shape (i.e., “r” and
`“n”). Likewise, “of” and “or” have the same number of letters, and the letter
`that differs is similar in shape (i.e., the “r” and the “f”). Third, independent
`claim 48 recites an “alternator to battery power connection” (emphasis
`added) rather than a “correction,” and no claim other than claim 1 recites an
`“alternator to battery power correction.” Ex. 1001, 28:6–29 (emphasis
`added); Ex. 1008, A, 2; Ex. 1002, 492 (amending claim 48 to this language).
`Fourth, the Specification does not support the claim as written. Although the
`Specification describes “predictive correction,” this type of correction does
`not relate to correction of battery power, and claim 1 does not recite
`“predictive” correction. See Ex. 1001, 7:9–15. The Specification (other
`than claim 1) does not contain a description of circuitry that maintains an
`alternator to battery power “correction” after removal of something or after
`an ignition signal. Further, the Specification provides several examples of
`maintaining an alternator to battery “connection” after removal “of” an
`ignition signal. For example, the Specification describes
`An optional method to control load dump induced voltage spikes
`is to hold the alternator-to-battery power connection for a short
`period after the ignition key is switched to the off position while
`immediately dropping out the glowplug load so as to remove the
`glowplug load dump from being sourced solely by the alternator.
`Ex. 1001, 12:16–21; see also 3:60–63 and 6:65–7:1 (describing maintaining
`power after removal of an ignition signal), 22:14–19 (EESS 110 prohibits
`glowplugs cycling if alternator 22 is running when power is applied to the
`start run switch 20).
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`A person of ordinary skill in the art would understand that limitation e
`of claim 1 contains two typographical errors and should read as recited
`below:
`
`load protection circuitry supported within the housing
`interior for temporarily maintaining an alternator to battery
`power connection after removal of an ignition signal until engine
`speed has been reduced to a specified value.
`c)
`Claim 9
`9. The apparatus of claim 1 wherein the programmable
`controller comprises a microprocessor and further wherein
`analog signals routed into the housing representing a voltage
`signals from
`the power source are performed by
`the
`microprocessor.
`Ex. 1001, 24:50–54 (emphasis added). This is the same language as the
`original claim. Ex. 1002, 47.
`
`In the related litigation, Patent Owner contended that “a voltage
`signals” should be interpreted as “voltage signals.” Ex. 1008, Ex. A, 2
`(citing Ex. 1001, 3:43–50, 6:48–55, 9:47–54, claim 9, claim 1 limitations (a)
`and (d)). In this proceeding, Patent Owner offers no construction regarding
`claim 9.9 Petitioner contends that Patent Owner’s interpretation from the
`related litigation should apply here. Pet. 16–17.
`
`For the reasons that follow, we cannot determine the scope of claim 9.
`Claim 9 recites “a voltage signals.” This phrase is unclear because use of
`the term “a” is appropriate with a singular noun (signal), but not with a
`plural noun (signals). Perhaps the phrase was meant to be “a voltage signal”
`and perhaps it was meant to be “voltage signals.” Either possibility is
`
`9 Patent Owner “reserves its rights to offer constructions of the limitations
`in the dependent claims should the Board decide to institute the Petition.”
`Prelim. Resp. 44 n.3.
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`consistent with the language of the claim in that the analog signals could
`become one or more voltage signals. We considered the portions of the
`Specification identified by Patent Owner as listed above. However, these
`disclosures do not clarify which of the two possibilities was intended. Nor
`does the prosecution history shed light on this ambiguity. The parties do not
`identify any relevant portions of the prosecution history.10 The correct
`interpretation of the claim is subject to reasonable debate.
`Beyond this ambiguity, claim 9 recites that “analog signals routed into
`the housing . . . from the power source are performed by the
`microprocessor.” Emphasis added. The claim does not state any action that
`is “performed” by the microprocessor on the analog signals. It is unclear
`how the analog signals can be both “from” the power source yet
`“performed” by the microprocessor. We discern no disclosure in the
`Specification that clarifies this ambiguity.
`
`The scope of claim 9 cannot be determined without speculation, and
`for that reason the differences between the claim and the prior art cannot be
`ascertained. Consequently, we do not consider any ground of
`unpatentability related to claim 9. See generally, Am. Honda Motor Co. v.
`Signal IP, Inc., Case IPR2015-01003, slip op. at 11–13 (PTAB Oct. 1, 2015)
`(Paper 11) (denying institution due to lack of clarity in the claim term
`“concentrated”); Samsung Display Co. v. Gold Charm Ltd., Case IPR2015-
`01452, slip op. at 12–13 (PTAB Nov. 13, 2015) (Paper 12) (denying
`institution due to lack of clarity in the claim terms “channel” and “channel
`length”).
`
`
`10 Patent Owner’s discussion of prosecution history related to claim 1 does
`not shed light on this aspect of claim 9. See Paper 14, 3–5.
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`Claim 17
`d)
`As originally filed, claim 17 recited, “the apparatus of claim 1
`additionally comprising a remote temperature sensor positioned outside the
`housing for monitoring engine temperature,” but when the ’258 patent
`issued, it recited “positoned” rather than “positioned.” Ex. 1002, 48; Ex.
`1001, 25:10–12. The parties contend that “positoned” is a typographical
`error and should be “positioned.” Pet. 15; Ex. 1008, Ex. A, 2–3.
`In consideration of the claim language and the Specification, for the
`reasons that follow, reading “positoned” as “positioned” is not subject to
`reasonable debate. First, on its face the, claim language seems to contain an
`error. The term “positoned” is not a word. Second, had the claim been
`amended to recite “positoned” instead of “positioned,” that change would
`have been reflected in the record and the absence of such an amendment in
`the file history implies the error is typographical. Third, such interpretation
`is consistent with the Specification in that the Specification does not recite
`the term “positoned.”
`Consequently, a person of ordinary skill in the art would understand
`that “positoned” as recited in claim 17 is a typographical error and should be
`read as “positioned.”
`3.
`monitor circuitry (all claims)
`Claim 1 recites, “monitor circuitry supported within a housing interior
`for providing an indicator signal corresponding to a voltage applied to the
`one or more glowplugs.”
`Patent Owner contends that this limitation should be construed to
`mean “circuitry within the glowplug controller housing that monitors
`electrical characteristics of the glowplugs and provides an indicator signal
`
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`Case IPR2016-01050
`Patent 6,148,258
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`that corresponds to a voltage applied to the one or more glowplugs.” Prelim.
`Resp. 32–34 (emphasis added). Petitioner does not offer a claim
`construction other than the general assertion that the ordinary meaning
`applies. See Pet. 12–13. For the reasons that follow, we disagree with
`Patent Owner’s assertion that the claimed monitor circuit monitors electrical
`characteristics of the glowplugs; rather, voltage is the sole characteristic that
`is monitored.
`Claim 1 does not recite that the monitor circuity monitors electrical
`characteristics of the glowplugs; rather, claim 1 recites that the circuitry
`provides an indicator signal corresponding to a voltage applied to the one or
`more glowplugs.
`Patent Owner identifies portions of the Specification that describe
`monitoring various characteristic of the glowplugs and modifying
`energization of the glowplugs based on those inputs. Prelim. Resp. 32–34
`(citing Ex. 2001 ¶¶ 44–45). None of these disclosures amounts to a
`lexicographical definition. At most, Patent Owner has identified that other
`characteristics may be monitored, but such examples are not incorporated
`into claim 1. As the Federal Circuit stated in SuperGuide Corp. v. DirecTV
`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004):
`Though understanding the claim language may be aided by the
`explanations contained in the written description, it is important
`not to import into a claim limitations that are not a part of the
`claim. For example, a particular embodiment appearing in the
`written description may not be read into a claim when the claim
`language is broader than the embodiment.
`Likewise, Dr. Lequesne’s testimony supports that other characteristics may
`be monitored, but does not warrant incorporating such monitoring into claim
`1. See Ex. 2001 ¶¶ 44–45.
`
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`As Patent Owner acknowledges, the Specification discloses that
`sensing “voltage and/or current” is preferred. Prelim. Resp. 34 (emphasis
`added); Ex. 1001, 9:22–25. Use of the phrase “and/or” indicates that (1)
`voltage and current may both be sensed (monitored) and (2) only voltage or
`only current may be sensed. Indeed, consistent with such interpretation,
`claim 28 depends from claim 1 and adds monitoring the current through one
`or more of the glowplugs. See Liebel-Flarsheim Co. v. Medrad, Inc., 358
`F.3d 898, 910 (Fed. Cir. 2004) (the presence of a dependent claim that adds a
`particular limitation gives rise to a presumption that the limitation in
`question is not present in the independent claim).
`Further, various dependent claims add monitoring of glowplug
`characteristics other than voltage applied. For example, claim 22 adds
`monitoring glowplug resistance, suggesting that such limitation is not
`present in claim 1.
`Monitor circuitry as claimed must monitor voltage applied to one or
`more glowplugs, but does not require monitoring other glowplug
`characteristics.
`4. Means based on sensed conditions (claims 29–31)
`Claim 29 depends from independent claim 1 and recites, “wherein the
`programmable controller comprises means based upon various sensed
`conditions to adjust a preglow energization time and an afterglow
`energization time to limit excessive temperatures of the glowplugs while
`applying adequate glowplug energy to facilitate engine starting and
`warmup.” Claims 30 and 31 contain this limitation by virtue of dependence
`from claim 29.
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`Petitioner contends this limitation should be construed pursuant to 35
`U.S.C. § 112(6) as means-plus-function language. Pet. 13–14. Petitioner
`contends that the corresponding structure is a microprocessor programmed
`to provide preglow and afterglow periods according to the algorithms in
`chart 1 and according to the timing diagram in Figure 2. Id. at 14 (citing Ex.
`1001, Abstract, 3:33–42, 3:64–4:37, 8:36–43, 11:6–24, 22:52–54, Chart 1,
`Fig. 2).
`Other than the general assertion regarding the applicable claim
`interpretation standard, Patent Owner does not address this limitation. See
`Prelim. Resp. 26–34.
`At this point in the proceeding we agree with Petitioner’s assertion
`that 35 U.S.C. § 112(6) is applicable to this limitation. Further interpretation
`is not needed at this time.
`5.
`Until (claim 1)
`Petitioner interprets “until” as claimed to mean “up to the point, but
`not thereafter.” Pet. 13 (citing Ex. 1010, 4, def. 3). Patent Owner makes no
`argument regarding this claim term. See Prelim. Resp. 26–34.
`We agree with Petitioner that the ordinary meaning is consistent with
`the Specification, and accept Petitioner’s construction as our preliminary
`interpretation. See Pet. 13; see, e.g., Ex. 1001, 13:18–20.
`
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`Patent 6,148,258
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`A.
`
`IV. PATENTABILITY
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts that claims 1, 9, 11, 12, 17, 18, and 29–31 are
`unpatentable under 35 U.S.C. § 103(a) over Auth and Hansen.11 Pet. 18–57.
`As a contingent alternative ground of unpatentability, Petitioner contends
`that claims 1, 9, 11, 12, 17, 18, and 29–31 are unpatentable under 35 U.S.C.
`§ 103 as obvious over Auth, Hansen, and Erdman.12 Pet. 2–5.
`Petitioner relies upon the Declaration of Mr. Arthur MacCarley, Ph.D.
`(Ex. 1003).13 Patent Owner includes the Declaration of Dr. Bruno Lequesne.
`Ex. 2001; see also Ex. 2002 (Dr. Lequesne’s curriculum vitae).
`
`B. OBVIOUSNESS OVER AUTH AND HANSEN
`1.
`Introduction
`Petitioner contends that claims 1, 9, 11, 12, 17, 18, and 29–31 are
`unpatentable under 35 U.S.C. § 103 as obvious over Auth and Hansen. Pet.
`2–5, 18–21, 25–57. Generally, Petitioner contends that Auth discloses the
`apparatus of claim 1 except that Auth does not explicitly disclose a housing
`or load protection circuity, and Petitioner relies on Hansen for such
`disclosures. Pet. 25–42.
`Auth discloses a system for controlling the temperature of a hot spot
`of a glowplug in an internal combustion engine. Ex. 1004, [54]. The control
`
`
`11 Auth, U.S.
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