Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: November 22, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AM GENERAL LLC,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01051
`Patent 5,729,456
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 13
`Entered: November 22, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AM GENERAL LLC,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01051
`Patent 5,729,456
`_______________
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2016-01051
`Patent 5,729,456
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`AM General LLC (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1, 2, 3, 5, 8 and 9 of U.S. Patent No. 5,729,456
`(Ex. 1001, “the ’456 Patent”). Paper 1 (“Pet.”). UUSI, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`“unless . . . 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). We determine that Petitioner has shown a reasonable likelihood
`that it would prevail in showing the unpatentability of at least one of the
`challenged claims. Accordingly, we institute an inter partes review.
`Related Proceedings
`B.
`We are informed that the ’456 Patent is involved in litigation before
`the U.S. Court of Federal Claims (“CoFC”) in UUSI, LLC. v. United States,
`Case No. 1:12-cv-00216 (C.F.C.). Pet. 6; Paper 5, 2. We also are informed
`that Petitioner has requested inter partes review of U.S. Patent Nos.
`5,570,666, 6,009,369 and 6,148,258, which are related to the ’456 Patent.
`Id. (IPR2016-1049, IPR2016-01048, and IPR2016-1050, respectively).
`Statutory Bar Under 35 U.S.C. § 315(b)
`C.
`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
`’456 patent under 28 U.S.C. § 1498; (2) Petitioner, as an interested party to
`the CoFC proceeding, was served with a Rule 14 Notice/Summons, together
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`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 here.
`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).
`
`The ’456 Patent
`D.
`The ’456 Patent issued March 17, 1998, from an application filed June
`27, 1995, which is a continuation-in-part of an application filed April 1,
`1993, now U.S. Pat. No. 5,570,666. Ex. 1001, [45], [22], [63]. U.S. Pat.
`No. 5,570, 666 issued from an application, which is a continuation-in-part of
`an application filed October 31, 1991, now abandoned. Id. at [63].
`The ’456 Patent discloses a glow plug controller that has a
`temperature sensor and a microprocessor for analyzing temperature and for
`controlling glow plugs in a diesel engine. Id. at Abstract. The ’456 Patent
`discloses multiple embodiments. In one embodiment, the microprocessor
`controls glow plug operation is based on a predetermined process or
`program, as a function of sensed temperature. See e.g., id. at 4:19–45, 6:20–
`29, 16:51–54. The microprocessor determines preglow and afterglow time
`periods based on the sensed temperature. See id. at 8:35–11:35. In other
`embodiments, the operation of the glow plug is controlled as a function of
`temperature plus other inputs, such as engine compression. See e.g., Ex.
`1001, 16:11–37, 16:54–63, 17:13–16, 18:6–8, 19:5–8 Figs. 23–25.
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`IPR2016-01051
`Patent 5,729,456
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`
`The Challenged Claims
`E.
`Claim 1 is independent and claims 2, 3, 5, 8, and 9 depend, directly or
`
`indirectly, therefrom. Independent claim 1 is illustrative and is reproduced
`below:
`
`
`
`1. A glow plug controller for a diesel engine comprising:
`a) a temperature sensor for monitoring the temperature of a
`portion of a diesel engine; and
`b) glow plug controller circuitry coupled to said temperature
`sensor for controlling operation of one or more diesel engine
`glow plugs of the combustion chambers of the diesel engine as a
`function of temperature; said glow plug controller circuitry
`comprising: i) oscillator means to provide a clock signal for
`operation in conjunction with the glow plug controller circuity,
`ii) digital logic means used in conjunction with said oscillator
`means to monitor time intervals for control functions of said
`glow plug controller circuitry; and iii) output circuitry coupled to
`the digital logic means for applying current to the one or more
`diesel engine glow plugs before or after starting the diesel
`engine.
`Asserted Grounds of Unpatentability
`F.
`Petitioner contends that the challenged claims are unpatentable based
`on the following specific grounds (Pet. 9–10):
`
`Reference[s]
`Yasuhara1
`
`Basis
`§ 103(a)
`
`Claim[s] Challenged
`1, 2, 3, 5, 8, and 9
`
`Demizu2
`
`§ 103(a)
`
`1, 2, 3, and 5
`
`Demizu and Yasuhara
`
`§ 103(a)
`
`8 and 9
`
`
`1 U.S. Patent No. 4,491,100 (Jan. 1, 1985) (Ex. 1004).
`2 U.S. Patent No. 4,566,410 (Jan. 28, 1986) (Ex. 1005).
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`
`Petitioner relies on the Declaration of C. Arthur MacCarley, Ph.D.
`(Ex. 1003). Patent Owner relies on the Declaration of Bruno Lequesne,
`Ph.D. (Ex. 2001).
`
`II. ANALYSIS
`
`Claim Construction
`A.
`Petitioner asserts that the ’456 Patent has expired and that the claims
`should be given their ordinary and customary meaning under the Phillips[3]
`standard. Pet. 13. Petitioner proposes explicit constructions for the claim
`terms “oscillator means to provide a clock signal for operations in
`conjunction with glow plug controller circuity” (claim 1) and “digital logic
`means” (claims 1, 2, 8, and 9). Pet. 14–16. Patent Owner agrees that the
`’456 Patent has expired and proposes an explicit construction under the
`Phillips standard for a portion of limitation b of claim 1 (“the glow plug
`controller circuitry limitation”). Id. at 28–34.
`For expired patents, we apply the Phillips standard used in district
`court patent litigation. See, e.g., In re Rambus, Inc., 694 F.3d 42, 46 (Fed.
`Cir. 2012) (holding that when an expired patent is subject to reexamination
`before the Office, the Phillips standard applies). Here, there is no dispute
`that the ’456 Patent has expired, and, accordingly, we apply the Phillips
`standard. In determining the meaning of a disputed claim limitation under
`the Phillips standard, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence. See DePuy Spine, Inc. v. Medtronic
`
`
`3 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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`Patent 5,729,456
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`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312‒17). There is a presumption, however, that a claim term
`carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`The glow plug controller circuitry limitation is:
`i) oscillator means to provide a clock signal for operation in
`conjunction with the glow plug controller circuity, ii) digital
`logic means used in conjunction with said oscillator means to
`monitor time intervals for control functions of said glow plug
`controller circuitry; and iii) output circuitry coupled to the digital
`logic means for applying current to the one or more diesel engine
`glow plugs before or after starting the diesel engine.
`Ex. 1001, claim 1. Patent Owner proposes that the glow plug controller
`circuitry limitation should be construed to mean
`circuitry that controls the operations of one or more glow plugs
`and includes both an oscillator clock and digital logic circuitry
`that are used in conjunction to monitor multiple time intervals for
`multiple control functions throughout the engine starting
`process, based on sensed temperature and other inputs, for
`applying current to one or more glow plugs before or after
`starting the diesel engine.
`Pet. 33.
`
`Petitioner does not propose an explicit construction of the entirety of
`the glow plug controller circuitry limitation, but does state that in the related
`CoFC proceeding the parties agreed that the claim terms “oscillator means”
`and “digital logic means” should not be construed pursuant to 35 U.S.C.
`§ 112(6), because a person of ordinary skill in the art (“POSITA”) would
`have understood that the terms connote sufficiently definite structure. Pet.
`14–16. Both parties indicate that in the related CoFC proceeding, the parties
`agreed that “oscillator means” means “oscillator clock” and “digital logic
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`Patent 5,729,456
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`means” means “digital circuit that performs Boolean algebra.” Pet. 14–15;
`Prelim. Resp. 28, n. 1. Thus, for the purposes of our Decision, we adopt the
`meaning of the discrete terms “oscillator means” and “digital logic means”
`applied in the related CoFC proceeding.
`
`We, however, do not adopt the remainder of Patent Owner’s proposed
`construction of the glow plug controller circuitry limitation. Patent Owner’s
`proposed construction improperly imports extraneous limitations from the
`Specification of the ’456 Patent into the claims. “It is improper for a court
`to add ‘extraneous' limitations to a claim, that is, limitations added ‘wholly
`apart from any need to interpret what the patentee meant by particular words
`or phrases in the claim.’” Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948,
`950 (Fed.Cir.1993) (citing E.I. Du Pont de Nemours & Co. v. Phillips
`Petroleum Co., 849 F.2d 1430, 1433 (Fed.Cir.1988)).
`
`For example, Patent Owner’s proposed construction adds that the
`monitoring of the control functions is based on sensed temperature and other
`inputs. Prelim. Resp. 31–33. Although other limitations of claim 1 require
`that the glow plug controller circuitry controls the glow plugs “as a function
`of temperature” (Ex. 1001, claim 1), the plain language of the glow plug
`controller circuitry limitation does not require that the control be based on
`other inputs. According to Patent Owner, the Specification of ’456 Patent
`describes various control functions that receive various inputs, such as
`engine temperature, engine pressure, and barometric pressure, etc. Prelim.
`Resp. 31. Patent Owner argues that because claim 1 uses the plural form of
`“control functions” the claimed monitoring of the control functions must be
`based on more than temperature as an input. Id. at 31–33.
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`Patent 5,729,456
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`On this record, we are not persuaded by Patent Owner that the use of
`
`the plural form of “control functions” requires that the monitoring be of
`different control functions that are based on different inputs. The ’456
`Patent describes multiple embodiments. In some embodiments, the
`operation of the glow plug is controlled as a function of temperature and
`other inputs, such as engine compression. See e.g., Ex. 1001, 16:11–37,
`16:54–63, 17:13–16, 18:6–8, 19:5–7, Figs. 23–25. In one embodiment,
`however, the operation of the glow plug is controlled as a function of the
`engine temperature and no other inputs. See e.g., id. at 4:19–45, 6:20–29,
`16:51–54. 17:13–15. We are not persuaded that the use of the plural form of
`“control functions” precludes claim 1 from encompassing this embodiment.
`For instance, the use of the plural form of “control functions” in claim 1 may
`refer to multiple instances that the glow plug controller circuitry functions to
`control the glow plug based on temperature (e.g., each time the engine is
`turned on). Further, other limitations of claim 1 are consistent with claim 1
`encompassing this embodiment. Claim 1 recites a temperature sensor for
`monitoring the temperature of an engine and that the glow plug controller
`circuitry controls operation of the glow plugs “as a function of temperature.”
`Ex. 1001, claim 1. Claim 1 does not recite other sensors, or that the glow
`plug controller circuitry controls operation of the glow plugs as a function of
`any other input.
`
`Similarly, Patent Owner’s proposed construction adds that the
`monitored intervals be throughout the engine starting process because the
`plural form of “intervals” is used and the ’456 Patent discloses multiple
`intervals, such as a preglow interval and an afterglow interval, which are
`throughout the engine starting process. Prelim. Resp. 29–31. The plain
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`IPR2016-01051
`Patent 5,729,456
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`language of the glow plug controller circuitry limitation has no such
`requirement. For reasons similar to those discussed above with respect to
`the term “control functions,” we are not persuaded on this record that the use
`of the plural form of “intervals” requires the claimed monitoring to be
`throughout the engine starting process or precludes monitoring only some
`but not other intervals during the engine starting process. For instance, the
`use of the plural form of “intervals” in claim 1 may refer to multiple
`instances that the glow plug controller circuitry monitors the preglow period
`or monitors the afterglow period (e.g., each time the engine is turned on) or
`time periods during only the preglow period.
`
`Additionally, we do not adopt the remainder of Patent Owner’s
`proposed construction of the glow plug controller circuitry limitation
`because Patent Owner’s proposed construction improperly reads limitations
`out of the claim. For example, Patent Owner’s proposed construction does
`not include the output circuity recited by claim 1 as being coupled to the
`digital logic means and performing the function of applying current to glow
`plugs before or after starting the diesel engine.
`
`For the purpose of our Decision, we determine that no explicit
`construction of the entirety of the glow plug controller circuitry limitation is
`required. Only terms which are in controversy need to be construed, and
`then only to the extent necessary to resolve the controversy. Vivid Techs.,
`Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed.Cir.1999); see
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
`(“[C]laim terms need only be construed ‘to the extent necessary to resolve
`the controversy.’”) (quotation omitted). We construe “oscillator means” to
`mean “oscillator clock” and “digital logic means” to mean “digital circuit
`
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`IPR2016-01051
`Patent 5,729,456
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`that performs Boolean algebra.” Otherwise, we give the remaining terms of
`the glow plug controller circuitry limitation their ordinary and customary
`meaning consistent with the Specification of the ’465 Patent.
`Obviousness
`B.
`A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
`
`the differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been obvious
`at the time the invention was made to a person having ordinary skill in the
`art to which the subject matter pertains. See KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 406 (2007). In analyzing the obviousness of a combination of
`prior art elements, it can be important to identify a reason that would have
`prompted one of skill in the art to combine the elements in the way the
`claimed invention does. Id. The question of obviousness is resolved on the
`basis of underlying factual determinations, including: (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of skill in the art; and (4) objective
`evidence of nonobviousness, i.e., secondary considerations4, if in evidence.
`See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Obviousness over Yasuhara
`Petitioner contends that claims 1, 2, 3, 5, 8, and 9 would have been
`
`obvious over Yasuhara. Pet. 18–38. Petitioner relies upon the testimony of
`Dr. MacCarley for support. Ex. 1003 ¶¶ 39–78. Patent Owner disputes this
`
`
`4 At this point, there is no evidence of secondary considerations in the
`record.
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`IPR2016-01051
`Patent 5,729,456
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`and relies upon the testimony Dr. Bruno Lequesne for support. Prelim.
`Resp. 34–37, 39–41; Ex. 2001 ¶¶ 56–61, 66–72.
`Overview of Yasuhara
`1.
`Yasuhara is titled “Control System for a Glow Plug of an Internal
`
`Combustion Engine,” and issued January 1, 1985. Ex. 1004, [45], [54].
`Figure 1 of Yasuhara is reproduced below.
`
`
`Figure 1 depicts an embodiment of the control system. Id. at 1:61–63.
`Temperature sensor 25 senses the temperature of the engine. Id. at 3:57–63.
`Time sensor 26 determines the time elapsed since the engine was last turned
`off. Id. at 3:64–68. Speed sensor 27 determined the rotational speed of the
`crankshaft of the engine. Id. at 4:1–5. Control unit 15 is a digital
`microcomputer system having input/output (I/O) interface circuit 30, central
`processing unit 31, and memory 33. Id. at 4:16–20, Fig. 2.
`
`Control unit 15 controls control switch 20 to activate and deactivate
`glow plug 21 in accordance with a program stored in memory 33. Id. at
`5:10–23, 6:36–46. Control unit 15 calculates a glow plug preheating period
`
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`IPR2016-01051
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`on the basis of the sensed engine temperature and the time elapsed since the
`engine was last turned off. Id. at 3:57–59, 5:13–18. If the engine
`temperature is higher than a reference value representing that preheating is
`unnecessary, the preheating period is set equal to zero. Id. at 7:18–21.
`Upon completion of preheating, an indicator urges the engine operator to
`start the engine. Id. at 5:36–43. The glow plugs, if activated for preheating,
`remain activated during and after activation of the starting motor. Id. at
`6:29–34. Not until the rotational speed of the crankshaft exceeds a reference
`value are the glow plugs deactivated. Id. at 6:36–46, Fig. 3.
`Independent Claim 1
`2.
`Petitioner contends that Yasuhara discloses all of the limitations of
`
`claim 1 except Yasuhara does not explicitly disclose an oscillator clock. Pet.
`19–31. Petitioner argues the Yasuhara’s digital microcomputer system
`would inherently include an oscillator clock and, in any event, it would have
`been obvious to a POSITA to provide an oscillator clock to provide a clock
`signal for the clocking operations disclosed in Yasuhara. Id. at 22–23, n. 5
`(citing Ex. 1003 ¶¶ 50, 51, 53).
`
`On this record, we are persuaded by Petitioner’s evidence and analysis
`that Yasuhara discloses all of the limitations of claim 1 and that it would
`have been obvious to a POSITA to use an oscillator clock to provide a clock
`signal for Yasuhara’s clocking operations. See Pet. 18–38; Ex. 1003 ¶¶ 44–
`60. Accordingly, we determine that Petitioner demonstrates a reasonable
`likelihood that it would prevail with respect to at least one of the claims
`challenged in the Petition.
`
`Patent Owner disputes that Yasuhara teaches or discloses all of the
`limitations of claim 1. See Prelim. Resp. 34–37, 39–41. Patent Owner
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`argues that Yasuhara does not teach or disclose the glow plug controller
`circuity limitation because Yasuhara does not teach “an oscillator used in
`conjunction with glow plug controller circuitry that performs timing
`operations throughout the engine starting process” or “monitoring time for
`multiple functions such as preglow, afterglow, and diagnostic operations.”
`Id. at 41. Patent Owner’s arguments are unpersuasive. Patent Owner’s
`argument is based upon its proposed construction of glow plug controller
`circuitry limitation. However, as discussed above in section II(A), we did
`not adopt Patent Owner’s proposed construction. Claim 1 does not require
`the oscillator to perform timing operations throughout the engine starting
`process or to monitor time for multiple different functions such as preglow,
`afterglow, and diagnostic operations. Thus, we are not persuaded by Patent
`Owner’s arguments that Yasuhara fails to teach or disclose all of the
`limitations of claim 1.
`Dependent Claim 8
`3.
`Claim 8 depends from claim 1 and additionally requires that the
`
`“digital logic means monitors the temperature output of the temperature
`sensor and applies current to the one or more glow plugs during a controlled
`time duration after the diesel engine starts.” Petitioner contends that
`Yasuhara meets this additional limitation. Pet. 35–36 (citing Ex. 1001,
`6:61–8:5, Fig. 4 (times between A3 and A4); Ex. 1003 ¶ 73)). On this
`record, we are persuaded by Petitioner that Yasuhara discloses the additional
`limitation of claim 8. As Petitioner points out, Yasuhara discloses that
`control switch 20 remains closed to activate the glow plugs, after the engine
`crankshaft is moved, until the expiration of the preset limit. See Ex. 1001,
`6:61–8:5, Fig. 4, steps 50, 62, 66.
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`Patent Owner argues that the “controlled time duration” of claim 8
`
`must be a time interval of variable duration during an afterglow period
`because the Specification of the ’456 Patent discloses such. Prelim. Resp.
`44–45. Patent Owner’s argument is unpersuasive because it is not
`commensurate with the scope of the claim. Claim 8 does not require that the
`controlled time duration be of a variable duration during an afterglow
`period. Thus, we are not persuaded by Patent Owner’s argument that
`Yasuhara fails to disclose the additional limitation of claim 8.
`Dependent Claim 9
`4.
`Claim 9 depends from claim 1 and additionally requires that “the
`
`digital logic means comprises an indicator device to provide an indication of
`operation modes or conditions of the diesel engine.” Petitioner contends that
`Yasuhara’s indicator 28 meets this limitation. Pet. 37–38. On this record,
`we are persuaded by Petitioner that Yasuhara discloses the additional
`limitation of claim 9. As Petitioner points out, Yasuhara discloses that
`indicator 28 indicates, for example, that the preheating is not yet finished or
`that preheating is complete. Ex. 1004, 4:6–8, 7:48–51. Preheating or
`preheating complete are conditions of the diesel engine.
`
`Patent Owner argues that Yasuhara’s indicator 28 does not indicate
`multiple operation modes because indication of preheating is a single use of
`the indicator and does not indicate a condition of a diesel engine, like a fault
`condition. Prelim. Resp. 45–47. Patent Owner’s argument is unpersuasive
`because it is not commensurate with the scope of the claim. Claim 9 does
`not require that the indicated operation modes be directed to multiple uses of
`the indicator and does not require that the indicated condition be a fault
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`condition. Thus, we are not persuaded by Patent Owner’s argument that
`Yasuhara fails to disclose the additional limitation of claim 9.
`Dependent Claims 2, 3, and 5
`5.
`Petitioner contends that claims 2, 3, and 5 are unpatentable over
`
`Yasuhara. Pet. 31–35. These claims depend from claim 1. On this record,
`we are persuaded by Petitioner’s evidence and analysis that claims 2, 3, and
`5 are unpatentable over Yasuhara. Patent Owner makes no arguments
`directed to the additional limitations of claims 2, 3, and 5. See Prelim. Resp.
`43–47.
`D. Obviousness over Demizu
`Petitioner contends that claims 1, 2, 3, and 5 would have been obvious
`
`over Demizu. Pet. 38–52. Petitioner relies upon the testimony of
`Dr. MacCarley for support. Ex. 1003 ¶¶ 83–106. Patent Owner disputes
`this and relies upon the testimony Dr. Bruno Lequesne for support. Prelim.
`Resp. 34–37, 39–41, 43–4l; Ex. 2001 ¶¶ 51–55, 62–65.
`Overview of Demizu
`1.
`Demizu is titled “Diesel Engine Glow Plug Controlling Device,” and
`issued January 28, 1986. Ex. 1005, [45], [54]. Demizu discloses a glow
`plug controlling device having a computer that “decides whether or not the
`engine needs to be preheated, on the basis of the output signal of the water
`temperature sensor and when necessary, the computer calculates a current
`supply time which is necessary to heat the glow plugs to a predetermined
`temperature.” Ex. 1005, 3:46–51. The computer calculates the time
`necessary to heat the glow plugs to a predetermined temperature if the
`temperature sensed by a water temperature sensor is less than a
`predetermined temperature. Id. at 4:51–5:19.
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`Figure 3 of Demizu is reproduced below.
`
`
`Figure 3 depicts a block diagram showing the circuit of the glow plug
`controlling device. Id. at 3:66–68. The circuit includes water temperature
`sensor 6, one-chip computer 2a, oscillation circuit 45 of a fixed frequency
`for determining the operation period of the computer, and arithmetic and
`logic unit 46 for executing the operating procedure. Id. at 4:17–44.
`Claim 1
`2.
`Petitioner contends that Demizu teaches or discloses all of the
`
`limitations of claim 1. Pet. 41–50. In particular, Petitioner argues that
`Demizu’s oscillation circuit 45 teaches the claimed oscillation means. Id. at
`44. Petitioner argues that
`[a] POSITA would have understood that the oscillator in this
`context generates the periodic clock signal that is not only
`fundamental to the operation of any “computer” as defined by
`Demizu, but also serves as the time base used by the computer
`(microcontroller) timer function or peripheral chip for measuring
`and comparing elapsed time periods, such as the time duration of
`each phase of glow plug control.
`
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`Id. at 44, n. 13 (citing Ex. 1003 ¶ 90).
`
`On this record, we are persuaded by Petitioner’s evidence and analysis
`that Demizu discloses all of the limitations of claim 1 and that it would have
`been obvious to a POSITA to use Demizu’s oscillator circuit to provide a
`clock signal to measure or compare elapsed time periods, such as the time
`duration of each phase of the glow plug control. See Pet. 18–38; Ex. 1003
`¶¶ 44–60. We note that the ’456 Patent, itself, discloses that using clocking
`circuits to regulate functions such as glow plug preheat and afterglow
`control is well known. Ex. 1001, 3:19–26. Accordingly, we determine that
`Petitioner demonstrates a reasonable likelihood that it would prevail with
`respect to at least one of the claims challenged in the Petition.
`
`Patent Owner disputes that Demizu teaches or discloses all of the
`limitations of claim 1. See Prelim. Resp. 37–39, 42–43. Patent Owner
`argues that Demizu does not teach or disclose the glow plug controller
`circuity limitation because Demizu does not teach or disclose “monitoring
`time for multiple functions such as preglow, afterglow, and diagnostic
`operations” and “even if Demizu, did teach or disclose the monitoring of a
`preglow function, that function is not based on sensed temperature in
`conjunction with other inputs for applying current to one or more glow plug
`before or after starting the diesel engine.” Id. at 43. Patent Owner’s
`arguments are unpersuasive. As for the ground based on Yasuhara, Patent
`Owner’s argument is based upon its proposed construction of glow plug
`controller circuitry limitation. As discussed above in section II(A), we did
`not adopt Patent Owner’s proposed construction. Claim 1 does not require
`monitoring time for multiple functions such as preglow, afterglow, etc., or
`monitoring a function based on sensed temperature in conjunction with other
`
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`inputs. Thus, we are not persuaded by Patent Owner’s arguments that
`Demizu fails to teach or disclose all of the limitations of claim 1.
`Claims 2, 3, and 5
`3.
`Petitioner contends that claims 2, 3, and 5 are unpatentable over
`Demizu. Pet. 50–52. These claims depend from claim 1. On this record,
`we are persuaded by Petitioner’s evidence and analysis that claims 2, 3, and
`5 are unpatentable over Demizu. Patent Owner makes no arguments
`directed to the additional limitations of claims 2, 3, and 5. See Prelim. Resp.
`43–47.
`E. Obviousness over Demizu and Yasuhara
`Petitioner argues that claims 8 and 9 would have been obvious over
`Demizu and Yasuhara. Pet. 39–40, 52–56; Ex. 1003 ¶¶ 81–84, 107–116.
`Claim 8
`1.
`Petitioner contends that it would have been obvious to a POSITA to
`“employ Yasuhara’s teachings of advantageous glow plug heating during
`and after cranking the engine” in Demizu. Pet. 39–40 (citing Ex. 1003 ¶¶
`81–84), 53 (citing Ex. 1004, 6:22–35, 6:61–8:5, Fig. 1, Fig. 3, Fig. 4; Ex.
`1003 ¶¶ 109). On this record, we are persuaded by Petitioner’s evidence and
`analysis that the additional limitation of claim 8 would have been obvious to
`a POSITA given Demizu and Yasuhara. We note that the ’456 Patent, itself,
`discloses that continuing operation of the glow plugs for a time during an
`afterglow period was known. Ex. 1001, 1:51–58. Accordingly, we
`determine that Petitioner demonstrates a reasonable likelihood that it would
`prevail with respect to at least one of the claims challenged in the Petition.
`Patent Owner argues that neither Demizu nor Yasuhara teach or
`disclose the additional limitation of claim 8. Prelim. Resp. 44–45. As
`
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`discussed above in section II(C)(3), Yasuhura discloses the additional
`limitation.
`In addition, Patent Owner generally argues that Petitioner has not
`provided sufficient motivation to combine Demizu and Yasuhara, that
`Petitioner is relying on improper hindsight, and that Demizu and Yasuhara
`cannot be combined. Id. at 47–50. Patent Owner’s arguments are
`unpersuasive. On this record, we determine that Petitioner has demonstrated
`sufficiently that it would have been obvious to combine Demizu and
`Yasuhara.
`
`Claim 9
`2.
`Petitioner contends that it would have been obvious to a POSITA to
`use “an indicator to inform the user of the status of the glow plugs,” as
`taught by Yasuhara. Pet. 39–40 (citing Ex. 1003 ¶¶ 81–84), 54–56 (citing
`Ex. 1004 4:24–26, 5:24–44, Fig. 1, Fig. 4; Ex. 1003 ¶ 114). On this record,
`we are persuaded by Petitioner’s evidence and analysis that the additional
`limitation of claim 9 would have been obvious to a POSITA given Demizu
`and Yasuhara. We note that the ’456 Patent, itself, discloses that indicator
`lamps, such as those that provides a visual indication to an operator that a
`preglow cycle is occurring, is a known component of a diesel engine. See
`Ex. 100, 1 2:5–3:6 (discussing “known components”). Accordingly, we
`determine that Petitioner demonstrates a reasonable likelihood that it would
`prevail with respect to at least one of the claims challenged in the Petition.
`Patent Owner argues that neither Demizu nor Yasuhara teach or
`disclose the additional limitation of claim 9. Prelim. Resp. 45–47. As
`discussed above in section II(C)(4), Yasuhara discloses the additional
`limitation.
`
`
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`
`In addition, Patent Owner generally argues that Petitioner has not
`provided sufficient motivation to combine Demizu and Yasuhara, that
`Petitioner is relying on improper hindsight, and that Demizu and Yasuhara
`cannot be combined. Id. at 47–50. Patent Owner’s arguments are
`unpersuasive. On this record, we determine that Petitioner has demonstrated
`sufficiently that it would have been obvious to combine Demizu and
`Yasuhara.
`
`
`III. ORDER
`For the reasons given, it is
`ORDERED that pursuant to 35 U.S.C. § 314, inter partes review is
`instituted as to the ’456 Patent based on the unpatentability of claims 1, 2, 3,
`5, 8, and 9 under 35 U.S.C. § 103(a) as obvious over Yasuhara; claims 1, 2,
`3, and 5 under 35 U.S.C. § 103(a) as obvious over Demizu; and claims 8 and
`9 under 35 U.S.C. § 103(a) as obvious over Yasuhar
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