`Tel: 571-272-7822
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`Paper 13
`Entered: April 11, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
`
`STIHL INCORPORATED and ANDREAS STIHL AG & CO. KG,
`Petitioner,
`
`v.
`
`ELECTROJECT TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00018
`Patent 6,955,081 B2
`____________
`
`
`
`Before JOSEPH A. FISCHETTI, MEREDITH C. PETRAVICK, and
`WILLIAM V. SAINDON, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
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`IPR2018-00018
`Patent 6,955,081 B2
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`I.
`
`INTRODUCTION
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`Stihl Incorporated and Andreas Stihl AG & Co. KG, (“Petitioner”)
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`filed a Petition requesting an inter partes review of claims 1–18 of U.S.
`
`Patent No. 6,955,081 B2 (Ex. 1001, “the ’081 patent”). Paper 1 (“Pet.”).
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`Electrojet Technologies, Inc., (“Patent Owner”) filed a Preliminary
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`Response. Paper 21 (“Prelim. Resp.”).
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`We have authority under 35 U.S.C. § 314, which provides that an
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`inter partes review may not be instituted unless the information presented in
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`the Petition and the Preliminary Response shows that “there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R
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`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Taking
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`into account the arguments presented in the Preliminary Response, we
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`conclude that the information presented in the Petition establishes a
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`reasonable likelihood that Petitioner would prevail with respect to all
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`challenged claims. Accordingly, we institute an inter partes review for
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`claims 1–18 of the ’081 patent.
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`A. Related Matters
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`The parties identify the following matters related to the ’081 patent
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`(Pet. 1; Paper 5, 1):
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`Electrojet Technologies, Inc. v. Stihl Incorporated and Andreas Stihl
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`AG & CO. KG, Case No. 2:17-cv-00224-RAJ-DEM (E.D.Va.).
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`In addition, Petitioner has filed a petition challenging Patent Owner’s
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`U.S. Patent No. 7,225,793 patent in IPR2018-00022, which Patent Owner
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`characterizes as “related to” the ’081 patent and Petitioner characterizes as
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`IPR2018-00018
`Patent 6,955,081 B2
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`“claim[ing] priority to the same original parent application . . . and shares
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`much of the same disclosure.” Paper 5, 1; Pet. 1–2.
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`B. The ’081 Patent
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`The ’081 patent describes the invention as “an intake air pressure
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`sensor assembly for an internal combustion engine . . . for determining
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`intake air mass and controlling the fuel injectors and ignition timing of said
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`engine.” Ex. 1001 1:21–25. It is known “that air intake pressures fluctuate
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`with the opening and closing of the intake valves [of the cylinder] during the
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`intake stroke [of the piston].” Id. at 2:18–20. The air intake pressures are
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`“understood in the art . . . [to] be used for intake air mass calculations in fuel
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`injection control.” Id. at 2:33–35. As to ignition timing, the ’081 patent
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`states that crankshaft and camshaft position measurements were typically
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`used to determine the angular position of the engine. Id. at 2:55–3:37. The
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`aim of the ’081 patent is to utilize the intake air pressure sensor to perform
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`the functions of these other sensors, to measure engine timing and intake air
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`mass, which represents a reduction in the total number of sensors required to
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`run a fuel-injected engine. Id. at 3:65–4:19.
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`C. Challenged Claims
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`Petitioner challenges claims 1–18 of the ’081 patent. Independent
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`claim 1 is reproduced below.
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`1. An engine control apparatus for determining engine position
`and intake air mass from a single sensory means, comprising:
`(a) an engine having at least one cylinder, a piston in said
`cylinder, a crankshaft connected to said piston, said piston
`being adapted to reciprocate between top dead center position
`and bottom dead center position defining a combustion
`chamber, an intake valve controlling the induction of an air
`mass into said combustion chamber with predetermined
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`IPR2018-00018
`Patent 6,955,081 B2
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`timing related to said crankshaft's angular position, said
`engine air induction system having its chamber contiguous
`with said valve and said engine combustion chamber, a
`pressure sensing element in communication with said air
`induction chamber;
`(b) a pressure sensor means for developing periodic sensor
`voltage timing pulses, the cycle time between timing pulses
`being an indication of engine crankshaft speed, and the pulse
`timing being an indication of a particular crankshaft degree of
`angular position;
`(c) a pressure sensor means for measuring intake air mass for the
`determination intake air mass;
`([d])1 a means for measuring in real-time, intake air pressure,
`cycle time, and crankshaft position.
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`
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`D. Prior Art and Asserted Grounds
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`Petitioner asserts the following obviousness grounds:
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`References
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`Abe2 and Kupske3
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`Claims Challenged
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`1–12, 14–16, and 18
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`Abe, Kupske, and knowledge of POSA4
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`13 and 17
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`1 This limitation appears as “(c)” in the original claim. We have modified it
`for clarity to “(d)” to avoid duplicative lettering of claim elements.
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`2 U.S Patent No. 4,866,620, iss. Sept. 12, 1989 (Ex. 1004).
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`3 DE 101 16 485 A1, published Oct. 10, 2002 (Ex. 1006) (certified
`translation).
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`4 “Person of Ordinary Skill in the Art.” Petitioner states that the ’081 patent
`“expressly admits that [a crank trigger] was well known [to a POSA].” Pet.
`42 (citing Ex. 1001, 3:13–15; Ex. 1010, 103–105) (Ex. 1001, 3:13–15
`(“[m]any small engines utilize a crankshaft trigger mechanism for indicating
`a predetermined crankshaft position for ignition purposes.”)).
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` 4
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`IPR2018-00018
`Patent 6,955,081 B2
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`References
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`Claims Challenged
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`Ostdiek5 and Vernier6
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`1, 3, 5, 6, 8, 10–12, and 14
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`Ostdiek, Vernier, and knowledge of POSA7 2, 4, 7, 9, 13, and 15–18
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`Pet. 4.
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`II. PATENTABILITY ANALYSIS
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`A. Claim Construction
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`Petitioner sets forth its proposed claim constructions for several
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`means-plus-function terms. Pet. 9–16. Patent Owner does not dispute at this
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`time Petitioner’s proposed constructions. We have reviewed Petitioner’s
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`proposed constructions and consider them reasonable, on this record, for the
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`reasons set forth in the Petition. We adopt Petitioner’s proposed
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`constructions, set forth below:
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`Claim(s)
`or
`Claim
`Element
`1(b)
`
`Term
`
`Construction
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`“pressure sensor means
`for developing periodic
`sensor voltage timing
`pulses”
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`“an intake pressure sensor in
`combination with an
`ECU for performing the function of
`developing periodic sensor voltage
`timing
`pulses”
`
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`5 U.S Patent No. 45,092,301, iss. Mar. 3, 1992 (Ex. 1007).
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`6 U.S Patent No. 5,261,369, iss. Nov. 16, 1993(Ex. 1008).
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`7 As explained in our discussion below, we need not reach the merits of
`Petitioner’s assertions regarding the scope of the knowledge of a person of
`ordinary skill in the art. Thus, we do not list here the specific knowledge
`relied upon by Petitioner.
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`IPR2018-00018
`Patent 6,955,081 B2
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`Claim(s)
`or
`Claim
`Element
`1(c)
`
`Term
`
`Construction
`
`“an intake pressure sensor in
`combination with an ECU for
`performing the function of
`measuring intake air mass for the
`determination intake air mass”
`“an ECU in combination with an
`intake pressure sensor for
`performing the function of
`measuring in real-time, intake air
`pressure, cycle time, and crankshaft
`position”
`“an intake pressure sensor in
`combination with an ECU for
`performing the function of detecting
`engine load”
`“crankshaft position sensor in
`combination with an ECU for
`performing the function of detecting
`crankshaft position”
`“an intake pressure sensor in
`combination with an ECU to
`perform the function of determining
`crankshaft position, where in the
`event of singular sensory component
`failure, the engine control apparatus
`is capable of determining crankshaft
`position to maintain engine run
`capability”
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` 6
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`
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`“pressure sensor means
`for measuring intake air
`mass”
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`1([d])
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`“means for measuring in
`real-time, intake air
`pressure, cycle time, and
`crankshaft position”
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`2, 4, 7, 9 “a pressure sensor means
`to detect engine load”
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`“additional sensory
`means to detect
`crankshaft position”
`
`“redundant means to
`determine crankshaft
`position, where in the
`event of singular sensory
`component failure, the
`engine control apparatus
`is capable of determining
`crankshaft position to
`maintain engine run
`capability”
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`3, 8
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`5
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`IPR2018-00018
`Patent 6,955,081 B2
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`B. Obviousness Over Abe (Ex. 1004) and Kupske (Ex. 1006)
`(Claims 1–12, 14–16, and 18)
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`We begin our analysis with claim 1. In general, claim 1 is directed to
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`an engine control for determining engine position and intake air mass from a
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`single sensory means, specifically a pressure sensor means. Petitioner’s
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`ground begins with assertions that Abe describes the limitations directed to
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`an engine (Pet. 27–29), the pressure sensor means with respect to measuring
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`intake air mass (id. at 32), and a means for measuring that intake air mass
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`(id. at 32–33). Petitioner then asserts that Kupske discloses the limitation
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`directed to a pressure sensor developing timing pulses indicating engine
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`crankshaft speed (cycle time) and position. Id. at 29–32. Petitioner asserts
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`that it would have been obvious to “incorporate Kupske’s engine controller
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`(which uses the signals from an intake pressure sensor to determine engine
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`position and engine cycle time) into the ECU disclosed in Abe.” Id. at 25.
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`Specifically, Petitioner states that a person of ordinary skill in the art would
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`have been motivated to use Kupske’s teachings “to calculate engine position
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`as an emergency backup when the crankshaft sensor (12) fails.” Id. at 25–
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`26. Petitioner concludes that such a combination would have been “nothing
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`more than the use of known techniques to improve similar methods in the
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`same way[,] or the combination of prior art elements according to known
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`methods to yield predictable results.” Id. at 26.
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`Patent Owner argues that Petitioner’s reasons to combine are
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`insufficient. Prelim. Resp. 14–30. We have reviewed these arguments and
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`find them uncompelling on this record at this stage of the proceeding. In
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`particular, Petitioner’s rationale is not insufficient for purposes of institution
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`at least because Petitioner has identified a specific motivation to combine:
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`IPR2018-00018
`Patent 6,955,081 B2
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`Kupske teaches using intake pressure sensor signals to determine engine
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`timing as a backup to more traditional crankshaft/camshaft sensors, in the
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`event those crankshaft or camshaft sensors stop working. See Ex. 1006 ¶ 17
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`(“the invention [is] specifically designed to continue to allow for emergency
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`operation of the engine in the event of a failure of the usual speed sensors”),
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`¶ 19 (“[i]n the event of a failure of both speed sensors . . ., the pressure
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`sensor 4 can be used to determine the cycle time tz for an engine cycle”).
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`Thus, Petitioner’s reasoning that a person of ordinary skill in the art had
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`reason to look to Kupske’s method of deriving cycle time, to help in
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`emergencies, has a factual underpinning.
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`Patent Owner further argues that Petitioner specifically states to
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`incorporate Kupske’s engine controller rather than the analyzer and engine
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`controller. Prelim. Resp. 18. To illustrate Patent Owner’s argument, Figure
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`1 of Kupske is reproduced below:
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` 8
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`IPR2018-00018
`Patent 6,955,081 B2
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`Figure 1 of Kupske depicts analyzer 8 and engine controller 2 as part
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`of control unit 10. Ex. 1006 ¶ 15. Analyzer 8 receives signals from pressure
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`sensor 4 and uses that information to emulate arithmetically the signals
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`otherwise provided by speed sensor 12 reading the position of camshaft 14.
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`Id. ¶ 19.
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`Patent Owner is correct that Petitioner states that it would have been
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`obvious “to incorporate Kupske’s engine controller” in the Petition. Pet. 25.
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`Patent Owner is also correct that Kupske describes analyzer 8 as generating
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`the appropriate signals, not the engine controller by itself. See Ex. 1006
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`¶ 19. However, reviewing Petitioner’s ground, Petitioner’s use of the phrase
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`“engine controller” is understood as a reference to “engine control unit” (i.e.,
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`id., Fig. 1, item 10). Petitioner incorporates those features of Kupske that
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`provide for backup sensing using the pressure sensor, and not some bodily
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`incorporation of Kupske’s control unit, which cannot provide that feature
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`alone. For example, Petitioner explains that the pressure sensor element of
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`claim 1(b) reads on the features of Kupske that provide cycle timing pulses
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`as an indication of engine crankshaft speed and angular position. Pet. 29.
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`Analyzer 8 is a necessary component of that, as Petitioner further explains in
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`the Petition. See id. at 29–31. Accordingly, Petitioner has set forth
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`sufficiently its alleged ground of unpatentability, to make clear it is
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`proposing to incorporate those features of Kupske to provide Abe’s
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`controller with the same backup capability taught in Kupske. Reviewing the
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`Petition and Patent Owner’s Preliminary Response, we determine that
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`Petitions has demonstrated a reasonable likelihood of showing claim 1 to
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`have been unpatentable over Abe and Kupske.
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`Patent 6,955,081 B2
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`Petitioner similarly has shown a reasonable likelihood of success as to
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`independent claims 6, 11, and 15, which have scope similar to that of claim
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`1. Patent Owner does not offer additional arguments as to claims 11 and 15
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`at this time. As to claim 6, Patent Owner argues that Petitioner does not
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`address “determining . . . intake air mass” as required by claim 6, step (g).
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`Prelim. Resp. 31. However, Petitioner points out how Abe discloses a
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`“pressure sensor [that] . . . transmits intake manifold pressure signals to the
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`ECU,” which, in turn “computes the amount of intake air Q (e.g., the intake
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`air mass).” Pet. 32. Accordingly, Patent Owner is incorrect that there are
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`gaps to fill because this element is directly and explicitly addressed in the
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`Petition.
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`Petitioner likewise has made sufficient showings for dependent claims
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`2–5, 7–10, 12, 14, 16, and 18, none of which Patent Owner argues at this
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`time. Pet. 33–35, 37–38, 40, 41–42. Dependent claims 2, 4, 7, and 9 require
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`a pressure sensor means to detect engine load, which Petitioner asserts is the
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`intake air quantity Q divided by engine speed N, and which is described in
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`Abe. See, e.g., Pet. 33 (citing Ex. 1004, 2:54–64, 7:39–50). Dependent
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`claims 3, and 8 require an additional sensory means to detect crankshaft
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`position, and dependent claims 12, 14, and 16 requires a crankshaft position
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`sensor, which Petitioner asserts is the ring gear and sensor arrangement in
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`Abe, and which “produces a pulse signal at predetermined intervals of crank
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`angle.” See, e.g., id. at 34 (citing Ex. 1004, 4:23–27; Ex. 1006 ¶ 17).
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`Dependent claims 5, 10, and 18 require an additional or redundant sensor,
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`which the combination affords because Kupske provides a backup for the
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`crankshaft sensor. See, e.g., id. at 35 (citing Ex. 1006 ¶¶ 17–21).
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`Patent 6,955,081 B2
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`C. Obviousness Over Abe, Kupske, and Knowledge of a Person of
`Ordinary Skill in the Art
`(Claims 13 and 17)
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`Dependent claims 13 and 17 require that the crankshaft position
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`sensor comprises a crank trigger. Petitioner asserts that the ’081 patent
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`admits that this is well known at the time of the invention, and that it would
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`accordingly have been obvious to include this known feature. Pet. 42–43
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`(citing Ex. 1001, 3:13–25; Ex. 1003 ¶¶ 154–155; Ex. 1010, 103–105).
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`Petitioner’s showing is sufficient to establish a reasonable likelihood of
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`success on this ground, and Patent Owner does not offer any rebuttal at this
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`time.
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`D. Obviousness Over Ostdiek and Vernier
`(Claims 1, 3, 5, 6, 8, 10–12, and 14)
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`Ostdiek, Vernier, and Knowledge of a Person of Ordinary Skill in the
`Art
`(Claims 2, 4, 7, 9, 13, and 15–18)
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`Petitioner’s proposed combination involves taking the engine control
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`apparatus of Ostdiek and modifying it to determine “engine position based
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`on signals from a single sensory means.” Pet. 45. Petitioner asserts that:
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`It would have been obvious to a POSITA to incorporate
`Vernier’s description of the use of signals from an intake
`pressure sensor to determine the engine’s position into the
`system disclosed in Ostdiek, as this would have amounted to
`nothing more than the use of known techniques to improve
`similar methods in the same way or the combination of prior art
`elements according to known methods to yield predictable
`results.
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`. . .
`
`A POSITA would have been motivated to incorporate the
`continuous pressure monitoring capabilities of Vernier in order
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`IPR2018-00018
`Patent 6,955,081 B2
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`to detect pressure inflection points, and use this to determine
`engine position to enhance the operation of the fuel injection
`system in Ostdiek.
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`Second, the combination of Ostdiek and Vernier was
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`obvious to try. . . . A POSITA would have recognized that
`Ostdiek’s teachings were consistent with Vernier’s and would
`have pursued the combination of these known solutions with a
`reasonable expectation of success.
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`Pet. 48–49.
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`Reviewing Petitioner’s ground, we determine that Petitioner has not
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`articulated sufficiently a reason explaining why the claimed subject matter
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`would have been obvious over these references. In the Abe-Kupske ground,
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`Petitioner gave a specific reason for the combination: Kupske teaches using
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`pressure sensors as a backup in case the cranskshaft sensor failed. In
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`contrast here, Petitioner merely states that the reason to combine is to obtain
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`the result of the combination, but fails to give a reason why a person of
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`ordinary skill in the art would seek out such result in the first place. Pet. 48
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`(“obvious . . . to incorporate . . . to determine the engine’s position”). A
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`reason for combination explains not the result of the combination, but why
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`such a combination would have been obvious. Unlike Kupske, which gives
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`a reason to measure the time between pressure peaks (as a backup), Vernier
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`merely states that such a calculation is possible. Ex. 1008, 3:1:5. Prior art
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`references are not combinable merely because it is possible to perform the
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`combination; a rationale must be provided. See Belden Inc. v. Berk-Tek
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`LLC, 805, F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner provides no
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`sufficient reason to modify Ostdiek’s system in some manner with the
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`teachings of Vernier. Accordingly, we determine that Petitioner has not
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`established a reasonable likelihood of success with the Ostdiek-Vernier
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`grounds.
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`III. ORDER
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`In view of the foregoing, it is hereby:
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`ORDERED that an inter partes review of the ’081 patent is instituted,
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`commencing on the entry date of this Order, and pursuant to 35 U.S.C.
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`§ 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a
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`trial; and
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`FURTHER ORDERD that the inter partes review is limited to
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`determining:
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`Whether claims 1–12, 14–16, and 18 would have been obvious
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`over Abe and Kupske; and
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`Whether claims 13 and 17 would have been obvious over Abe,
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`Kupske, and the knowledge of a person of ordinary skill in the art.
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`13
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`IPR2018-00018
`Patent 6,955,081 B2
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`For PETITIONER:
`
`Robert Hilton
`rhilton@mcguirewoods.com
`
`George Davis
`gdavis@mcguirewoods.com
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`For PATENT OWNER:
`
`Thomas Lewry
`tlewry@brookskushman.com
`
`Michael MacCallum
`mmaccallum@brookskushman.com
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`John Nemazi
`jnemazi@brookskushman.com
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`John Rondini
`jrondini@brookskushman.com
`
`Mark Jotanovic
`mjotanovic@brookskushman.com
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