Trials@uspto.gov
`571-272-7822
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`Paper 39
`Date: February 12, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`IPR2019-01399
`Patent 9,810,166 B2
`____________
`
`
`
`Before KEN B. BARRETT, LYNNE H. BROWNE, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`ORDER
`Dismissing Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 39
`Date: February 12, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`IPR2019-01399
`Patent 9,810,166 B2
`____________
`
`
`
`Before KEN B. BARRETT, LYNNE H. BROWNE, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`ORDER
`Dismissing Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`IPR2019-01399
`Patent 9,810,166 B2
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`Ford Motor Company (“Petitioner”)1 filed a Petition requesting inter
`
`partes review of U.S. Patent No. 9,810,166 B2 (“the ’166 patent,”
`Ex. 1001). Paper 2 (“Pet.”). The Petition challenges the patentability of
`claims 1–5, 7, 8, 10–24, and 26–30 of the ’166 patent. Massachusetts
`Institute of Technology (“Patent Owner”)2 filed a Response to the Petition.
`Paper 18 (“PO Resp.”). Petitioner filed a Reply (Paper 22, “Pet. Reply”) and
`Patent Owner filed a Sur-reply (Paper 28, “PO Sur-reply”).
`
`Additionally, Patent Owner filed a Motion to Exclude Evidence
`(Paper 29), to which Petitioner filed an Opposition (Paper 30), and Patent
`Owner filed a Reply (Paper 33).
`
`An oral hearing was held on November 19, 2020, and a transcript of
`the hearing is included in the record. Paper 36 (“Tr.”).
`
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons discussed below, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1–5, 7, 8, 10–24, and 26–30 of
`the ’166 patent are unpatentable. We also dismiss Patent Owner’s Motion to
`Exclude.
`
`B. Related Proceedings
`One or both parties identify, as matters involving or related to
`
`the ’166 patent, Ethanol Boosting Systems, LLC v. Ford Motor Company,
`
`
`1 Petitioner identifies Ford Motor Company as the real party-in-interest.
`Pet. 79.
`2 Patent Owner identifies “Massachusetts Institute of Technology, the Patent
`Owner, and Ethanol Boosting Systems, LLC, the Exclusive Licensee,” as
`real parties-in-interest. Paper 8, 2.
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`2
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`IPR2019-01399
`Patent 9,810,166 B2
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`Civil Action No. 1:19-cv-00196-CFC-SRF (D. Del.), aff’d, 831 F. App’x
`505 (Fed. Cir. 2020) (rule 36 affirmance), Ethanol Boosting Systems, LLC v.
`Ford Motor Company, Civil Action No. 1:20-cv-00706-CFC (D. Del.), and
`Patent Trial and Appeal Board case IPR2020-00010. Pet. 79–81; Paper 6,
`2–6. The parties also identify, as involving challenges to related patents,
`IPR2019-01400 and IPR2020-00013 (US 8,069,839), IPR2019-01401 and
`IPR2020-00011 (US 9,255,519), and IPR2019-01402 and IPR2020-00012
`(US 10,138,826). Pet. 79; Paper 24, 2–3.
`
`C. The ’166 Patent
`The ’166 patent, titled “Fuel Management System for Variable
`
`Ethanol Octane Enhancement of Gasoline Engines,” issued November 7,
`2017, from an application filed March 20, 2017, and ultimately claims
`priority to an application filed November 18, 2004. Ex. 1001, codes (54),
`(45), (22), (63). The ’166 patent is directed “to spark ignition gasoline
`engines utilizing an antiknock agent which is a liquid fuel with a higher
`octane number than gasoline such as ethanol to improve engine efficiency.”
`Id. at 1:35–38. Figure 1 of the ’166 patent is reproduced below.
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`Figure 1 depicts “a block diagram of one embodiment of the invention
`disclosed” in the ’166 patent. Id. at 3:3–4. Spark ignition gasoline
`engine 10 includes knock sensor 12, fuel management microprocessor
`system 14, engine manifold 20, and turbocharger 22. Id. at 3:20–28.
`Ethanol tank 16 contains an anti-knock agent, such as ethanol, and gasoline
`tank 18 contains the primary fuel, such as gasoline. Id. at 3:22–27. Fuel
`management microprocessor system 14 controls the direct injection of the
`anti-knock agent into engine 10 and the injection of gasoline into engine
`manifold 20. Id. “The amount of ethanol injection is dictated either by a
`predetermined correlation between octane number enhancement and fraction
`of fuel that is provided by ethanol in an open loop system or by a closed
`loop control system that uses a signal from the knock sensor 12 as an input
`to the fuel management [] microprocessor 14.” Id. at 3:28–34. The fuel
`management system minimizes the amount of ethanol directly injected into
`the cylinder while still preventing engine knock. Id. at 3:34–36.
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`“Direct injection substantially increases the benefits of ethanol
`
`addition and decreases the required amount of ethanol. . . . Because ethanol
`has a high heat of vaporization there will be substantial cooling when it is
`directly injected into [] the engine 10,” which “further increases knock
`resistance.” Id. at 3:41–49. The amount of octane enhancement needed
`from the ethanol to prevent knocking is a function of the torque level. Id.
`at 6:4–15. In the embodiment of Figure 1, “port fuel injection of the
`gasoline in which the gasoline is injected into the manifold rather than
`directly injected into the cylinder is preferred because it is advantageous in
`obtaining good air/fuel mixing and combustion stability that are difficult to
`obtain with direct injection.” Id. at 3:49–54.
`
`D. Illustrative Claims
`Of the challenged claims of the ’166 patent, claims 1, 19, and 22 are
`
`independent claims. The remaining challenged claims depend directly or
`indirectly from one of those independent claims. Independent claim 1, 19,
`and 22, reproduced below, are illustrative.
`1. A fuel management system for a spark ignition engine
`which utilizes port fuel injection and also utilizes direct fuel
`injection;
`
`and where there is a first torque range where direct
`injection and port injection are both used at the same value of
`torque throughout the first torque range
`
`and where in at least part of the first torque range as
`torque is increased the amount of fuel that is directly injected is
`changed so as to obtain knock-free operation and the amount of
`directly injected fuel used to provide knock-free operation is
`minimized.
`
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`19. A fuel management system for a turbocharged spark
`ignition engine which utilizes port fuel injection and also
`utilizes direct fuel injection;
`
`and where there is a first range of torque throughout
`which direct injection and port injection are used at the same
`value of torque;
`
`and wherein as torque is increased the fraction of fuel
`that is directly injected is increased to a value that prevents
`knock;
`
`and where there is a second range of torque where only
`port fuel injection is used;
`
`and where when torque exceeds the highest torque in the
`second range of torque the engine operates in the first range of
`torque.
`
`
`
`22. A spark ignition engine where port fuel injection and
`direct injection are used and the fraction of fuel provided by
`direct injection is increased so as to prevent knock that would
`otherwise occur; and where spark retard is employed to enable
`reduction of the amount of direct injection that would otherwise
`be employed.
`Ex. 1001, 7:38–48, 8:42–55, 62–67.
`
`
`
`E. Evidence
`Petitioner relies on the following references:
`Reference
`Dates
`
`Exhibit No.
`
`Kobayashi US 7,188,607 B2
`
`Yuushiro
`
`JP H10-252512
`
`Rubbert
`
`DE 198 53 799 A1
`
`Filed June 27, 2003;
`Issued March 13, 2007
`Filed March 13, 1997;
`Published Sept. 22, 1998
`Filed Nov. 21, 1998;
`Published May 25, 2000
`
`1005
`
`1006
`
`1007
`
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`Reference
`
`Dates
`
`Exhibit No.
`
`Kinjiro
`
`JP 2002-227697
`
`Filed Jan. 31, 2001;
`Published Aug. 14, 2002
`Bosch Automotive Handbook (Robert Bosch GmbH, 3rd ed.
`1993) (“Bosch”)
`
`1008
`
`1031
`
`Petitioner also relies on the Declaration of Dr. Nigel N. Clark
`
`(Ex. 1003) in support of its arguments and Patent Owner relies on the
`Declaration of Neil E. Hannemann (Ex. 2002) in support of its arguments.
`The parties rely on other exhibits as discussed below.
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`
`following grounds:
`Claim(s) Challenged
`1–5, 7, 8, 10, 14–21
`1–5, 7, 8, 10–24, 26–30
`1–5, 7, 8, 10–24, 26–30
`
`Reference(s)/Basis
`Kobayashi, Yuushiro
`Rubbert, Yuushiro, Bosch
`Kinjiro, Bosch
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`
`II. ANALYSIS
`A. Principles of Law
`Petitioner bears the burden of persuasion to prove unpatentability of
`
`the claims challenged in the Petition, and that burden never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). To prevail, Petitioner must establish by a
`preponderance of the evidence that the challenged claims are unpatentable.
`35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
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`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 said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). 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) any objective evidence of obviousness
`or non-obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. The Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation marks and citation omitted).
`
`Petitioner’s declarant, Dr. Clark, opines that:
`the person of ordinary skill in the field of the ’166 Patent would
`be expected to have at least a bachelor’s degree in engineering
`and at least five years of experience in the field of internal
`combustion engine design and controls. Individuals with
`different education and additional experience could still be of
`ordinary skill in the art if that additional experience
`compensates for a deficit in their education and experience
`stated above.
`Ex. 1003 ¶ 10; see Pet. 9.
`
`
`3 The parties have not directed our attention to any objective evidence of
`obviousness or non-obviousness.
`
`8
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`Patent Owner does not dispute this characterization of the level of
`
`ordinary skill in the art. Patent Owner’s declarant, Mr. Hannemann, opines
`that:
`
`The relevant art is the general area of internal combustion
`
`engine design and controls. The person of ordinary skill in the
`art is a person with a bachelor’s degree in mechanical
`engineering, or a related field, and at least five years of
`experience in the field of internal combustion engine design and
`controls. Individuals with different education and additional
`experience could still be of ordinary skill in the art if that
`additional experience compensates for a deficit in their
`education and experience stated above.
`Ex. 2002 ¶ 40.
`
`We find that Mr. Hannemann’s definition of the level of ordinary skill
`in the art is substantially the same as Dr. Clark’s characterization. We
`accept and adopt the parties’ characterization of the level of ordinary skill in
`the art, which we find is consistent with the level of skill reflected in
`the ’166 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may
`reflect an appropriate level of skill in the art).
`
`C. Claim Construction
`In an inter partes review requested in a petition filed on or after
`
`November 13, 2018, we apply the same claim construction standard used in
`district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2019).
`
`In applying that standard, claim terms generally are given their
`ordinary and customary meaning as would have been understood by a person
`of ordinary skill in the art at the time of the invention and in the context of
`the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining
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`the meaning of the disputed claim limitation, we look principally to the
`intrinsic evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17).
`
`In parallel litigation in U.S. District Court for the District of
`Delaware, the District Court conducted a claim construction hearing on
`January 8, 2020. Ex. 1040, 1. The District Court issued a Claim
`Construction Order in which the Court construed certain terms disputed in
`that litigation. Ex. 1041. The Court’s reasoning is set forth in the transcript
`of the claim construction hearing. Id. at 1, see Ex. 1040. In the Order, the
`Court also identified and adopted the litigants’ agreed-upon constructions of
`certain terms. Ex. 1041, 3–4.
`
`As a result of the District Court’s claim construction Order, the parties
`stipulated to non-infringement of the asserted claims of the ’166 patent, and
`Patent Owner appealed to the United States Court of Appeals for the Federal
`Circuit. See Pet. Reply 9–10; PO Resp. 30–31. The Federal Circuit
`affirmed the District Court’s decision. Ex. 1052 (Rule 36 affirmance). We
`have considered the District Court’s constructions in reaching a
`determination in this inter partes review. See 37 C.F.R. § 42.100(b)
`(providing that “[a]ny prior claim construction determination concerning a
`term of the claim in a civil action . . . that is timely made of record in the
`inter partes review proceeding will be considered”). The parties both assert,
`and we agree, that the District Court’s construction of the “fuel” terms,
`which apparently was the subject of the dispute in that forum, is not
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`implicated by the parties’ disputes in this inter partes review.4 See Pet.
`Reply 9–10; PO Resp. 30–31.
`
`As will be evident from our analysis below, we determine that we
`need not expressly construe any claim term to resolve the parties’ disputes in
`this proceeding. We do, however, address here Patent Owner’s argument
`that the claims require that the result of knock-free operation be caused by
`evaporation.
`“So as to obtain knock-free operation” and similar phrases
`Each of the challenged independent claims contains a recitation
`
`regarding the relationship of the amount of directly injected fuel to the
`prevention of knock. Independent claim 1, for example, recites that “the
`amount of fuel that is directly injected is changed so as to obtain knock-free
`operation.” Ex. 1001, 7:45–46; see also id. at 8:48–50 (claim 19: “the
`fraction of fuel that is directly injected is increased to a value that prevents
`knock”); 8:63–65 (claim 22: “the fraction of fuel provided by direct
`injection is increased so as to prevent knock that would otherwise occur”).
`
`Patent Owner argues that “[t]hese phrases . . . require, at a minimum,
`that the injection of the directly injected fuel results in obtaining knock-free
`operation (Claim 1), or results in preventing knock (Claims 19 and 22), as a
`physical effect caused by the evaporation of the directly injected fuel.” PO
`Resp. 23 (emphasis in original) (citing Ex. 2002 ¶ 88). In support, Patent
`Owner contends, “[t]hat follows from the plain language of those claim
`
`
`4 The District Court construed “directly injected fuel” and similar phrases as
`“a fuel that contains an anti-knock agent that is not gasoline, and that is
`different from the fuel used for port injection/in the second fueling system.”
`Ex. 1041, 1.
`
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`phrases . . . as well as the description in the specification of the ’166 Patent,”
`id. at 23–24, and “[t]hose requirements are common sense requirements in
`view of the specification,” PO Sur-reply 10.
`
`Petitioner, in response, argues that Patent Owner’s proposed
`constructions would require the importation of requirements “that find no
`support in the ’166 Patent.” Pet. Reply 5–6. According to Petitioner, the
`claims do not require that proposed by Patent Owner and, “instead, they
`merely require [direct injection] and knock prevention,” and that no further
`construction of the phrases is necessary. Id. at 6 (footnote and citations
`omitted).
`
`We are not persuaded by Patent Owner’s arguments. As for Patent
`Owner’s argument that the claims should be read to require evaporation as
`the mechanism of knock-reduction, we disagree that such a requirement
`“follows from the plain language of those claim phrases” or is a “common
`sense requirement[].” See PO Resp. 23; PO Sur-reply 10. The
`“evaporation” term is not, as Patent Owner implies, in the language of the
`challenged claims of the ’166 patent and we decline to read it in as a matter
`of “common sense.”
`
`Patent Owner’s reliance on the Specification also is not persuasive.
`Patent Owner quotes from a paragraph that begins with: “In one aspect, the
`invention is a fuel management system . . . including a source of an
`antiknock agent such as ethanol.” Ex. 1001, 2:23–25; see PO Resp. 24
`(citing Ex. 1001, 2:27–32). Patent Owner then quotes, in support of its
`position, the statement that “[e]thanol has a high heat of vaporization so that
`there is substantial cooling of the air-fuel charge to the cylinder when it is
`injected directly into the engine.” PO Resp. 24 (quoting Ex. 1001, 2:30–32).
`
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`Patent Owner’s quotation substitute’s ellipses for the phrase, with emphasis
`added, indicating that “[a] preferred antiknock agent is ethanol.” Compare
`id. 24 with Ex. 1001, 2:25–32. We decline to read a preferred embodiment
`into the claims.
`
`Additionally, we note that Patent Owner has obtained claims in
`another patent that explicitly recite vaporization as a mechanism of
`knock-reduction. See, e.g., IPR2019-01401, Ex. 1001, 7:25–29 (U.S. Patent
`No. 9,255,519 B2, claim 1: “where the fuel management system controls
`fueling from a first fueling system that directly injects fuel into at least one
`cylinder as a liquid and increases knock suppression by vaporization
`cooling” (emphasis added)). This supports our determination that Patent
`Owner’s proposed requirement of a “physical effect caused by the
`evaporation” should not be read into the claims of the ’166, where the
`drafter omitted such language.
`
`We further address Patent Owner’s position as to the phrases “so as to
`obtain knock-free operation” and the like below in the context of Patent
`Owner’s arguments regarding the relied on prior art references.
`
`D. The Alleged Obviousness of Claims 1–5, 7, 8, 10, and 14–21
`Over Kobayashi and Yuushiro (Ground 1)
`Petitioner alleges that claims 1–5, 7, 8, 10, and 14–21 of the ’166
`
`patent would have been obvious over Kobayashi and Yuushiro. See Pet. 11–
`24 (addressing claim 1). Patent Owner argues that a person of ordinary skill
`in the art would not have had a motivation to combine the references.
`Prelim. Resp. 37. For the reasons discussed below, we determine that
`Petitioner has not adequately explained why a person of ordinary skill in the
`art would have had a reason to modify Kobayashi by Yuushiro in the manner
`proposed by Petitioner.
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`1. Kobayashi (Ex. 1005)
`Kobayashi “pertains to a technique of controlling auto ignition of the
`
`air-fuel mixture to take out power with a high efficiency, while effectively
`reducing emission of air pollutants through combustion.” Ex. 1005, 1:13–
`16. Petitioner’s annotated version of Kobayashi’s Figure 1 is reproduced
`below.
`
`
`Pet. 12. Kobayashi’s Figure 1 depicts “the structure of an engine . . . that
`adopts [Kobayashi’s] premix compression ignition combustion system.”
`Ex. 1005, 7:39–41. Petitioner’s annotations label the port injection (“PI”) of
`gasoline (with the injector in red) and direct injection (“DI”) of, for example,
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`14
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`hydrogen or ethanol (with the injector in blue). Engine 10 includes two fuel
`injection valves (valves 14, 15). Id. at 9:44–47. Gasoline is injected through
`valve 15 into intake conduit 12 and hydrogen gas is injected through
`valve 14 into the combustion chamber. Id. at 9:47–50. Kobayashi discloses
`that, in addition to hydrogen gas, liquid fuels with higher octane values than
`gasoline, such as methanol and ethanol, may be used. Id. at 9:58–63.
`
`Engine control unit (ECU) 30 controls engine 10, including fuel
`injection valves 14, 15, and spark plug 136. Id. at 10:16–17, 27–29.
`ECU 30 also detects engine knocking using knocking sensor 25. Id.
`at 10:34–36. At low loads, the engine uses the air-fuel mixture injected by
`fuel injection valve 15, and which ignites via compression and combusts
`thereby forcing the piston downward and producing power. Id. at 13:39–
`14:3. Under the ECU’s control, when the engine is under a high load
`condition, hydrogen is injected into the cylinder to prevent knocking. Id.
`at 11:58–64, 12:7–12, 13:50–56. Kobayashi explains that, at high loading
`conditions, the air-fuel (gasoline) mixture is set to a high excess air ratio,
`which prevents knocking but also prevent auto-ignition of the mixture. Id.
`at 15:32–39. The hydrogen-air mixture is ignited by spark plug 136, which,
`in turn, results in combustion that raises the internal pressure in the cylinder
`thereby compressing the gasoline-air mixture and starting auto-ignition of
`that gasoline-air mixture. Id. at 16:16–27.
`2. Yuushiro (Ex. 1006)
`Yuushiro “relates to a compression ignition type internal combustion
`
`engine that compresses premixed gas at high pressure, and causes
`compression ignition.” Ex. 1006 ¶ 1. Petitioner’s annotated version of
`Yuushiro’s Figure 1 is reproduced below.
`
`15
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`Pet. 14. Annotated Figure 1 depicts “a cross-section view . . . of
`[Yuushiro’s] compression ignition internal combustion engine,” and
`includes Petitioner’s labels “PI” (port injector,5 in red) and “DI” (direct
`injector, in blue). Ex. 1006, 10 (“Brief Description of the Drawings”);
`Pet. 14. Engine 1 includes cylinder 4 with cylinder head 3, intake port 6,
`combustion chamber 14, port injection valve 15, and in-cylinder injection
`valve 16. Ex. 1006 ¶¶ 21, 22, 25.
`
`Yuushiro’s Figure 3 is reproduced below.
`
`
`5 Yuushiro’s Figure 1 includes a reference number “5” for the port injection
`valve and for the piston. The port injection valve should be reference
`numeral “15.” See Ex. 1006 ¶¶ 21, 25.
`16
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`Figure 3 provides an exemplary fuel injection map. Id. at 10 (“Brief
`Description of the Drawings”). Yuushiro discloses that its system identifies
`a reference load amount (Hb), corresponding to a reference injection amount
`(Qb), the maximum amount of fuel injected through port injection for which
`knocking does not occur. Id. ¶¶ 16, 38, 39. Loads that are equal to or less
`than Hb correspond to a light load zone and loads greater than Hb
`correspond to a high load zone. Id. ¶ 39. For loads in the light load zone,
`only port injection through valve 15 is used. Id. For loads in the high load
`zone, both port injection and direct injection are used. Id. As seen in
`Figure 3, in the high load zone, the amount of fuel directly injected into the
`cylinder through valve 16, Qd, increases with increasing load, as the port
`injection amount, Qb, remains the same, that is, at the maximum value for
`which knocking does not occur. Id. ¶ 39, Fig. 3; see also id. ¶¶ 41–50
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`(describing operations in the light load zone), ¶¶ 51–58 (describing
`operations in the high load zone).
`3. Discussion
`The challenged claims recite, in pertinent part, a fuel management
`
`system where both port fuel injection (PI) and direct fuel injection (DI) are
`used in the same torque range and where, along with increasing torque, the
`fraction of DI fuel is increased to a value that prevents knock. See, e.g.,
`Ex. 1001, 7:38–51, 8:42–55 (independent claims 1 and 19 and dependent
`claim 2). The increasing DI fuel is the subject of the parties’ dispute that we
`discuss here.
`
`Petitioner asserts that “Kobayashi discloses an engine . . . that uses
`both PI and DI where the fuel quantity injected via the injection mechanisms
`is determined based on a fuel map.” Pet. 11 (citing Ex. 1005, 9:44–47,
`12:14–21; Ex. 1003 ¶ 158). Petitioner further asserts that “Kobayashi uses
`PI fuel in both low and high loading conditions . . . [and] uses a second,
`spark-ignited DI fuel in high loading conditions to ignite the PI fuel and
`avoid knocking.” Id. at 13 (citing Ex. 1005, 9:44–50, 12:7–12, 15:65–16:27;
`Ex. 1003 ¶ 158).
`
`Petitioner turns to Yuushiro, asserting that it discloses a fuel map
`where only PI fuel is used at a light load and both DI fuel and PI fuel are
`used at a higher load. Id. at 14. Petitioner’s proposed modification is the
`use of Yuushiro’s fuel map in Koboyashi’s engine. See Pet. Reply 11;
`Tr. 23:12–14 (“[T]he proposal that’s been advanced is that the person of
`skill in the art looking at Kobayashi would add the fuel map, look to the fuel
`map of the Yuushiro reference to fuel the engine.”). Petitioner argues that it
`would have been obvious to improve Koboyashi’s fuel map to include an
`increase in the DI fuel, and that Yuushiro discloses such a map. Pet.
`
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`Reply 13 (citing Ex. 1003 ¶¶ 158–166). According to Petitioner, Yuushiro
`“discloses DI fuel making a substantive contribution to engine torque under
`high loading conditions . . . [and] augments and improves the system of
`Kobayashi in that it supports a higher fuel to air ratio in the cylinder and
`allows for the amount of DI fuel to be increased as load is increased.” Pet.
`at 16 (citing Ex. 1003 ¶ 163).
`
`We first consider Petitioner’s primary assertion of a motivation, which
`is as follows.
`A POSITA [person of ordinary skill in the art] would have also
`understood that by relying on a lean air/fuel mixture, Kobayashi
`has a limit to its engine power output. Ex. 1003, ¶160. The
`POSITA would have looked to known techniques to increase
`engine power output, including increasing the ratio of fuel to air
`in the cylinder to be at or near a stoichiometric ratio. Ex. 1003,
`¶¶160-61.
`Pet. 15. Petitioner further argues that Kobayashi would be modified in
`accordance with Yuushiro’s teaching of the use of more DI fuel to provide
`“a substantive contribution to engine torque under high loading conditions.”
`Id. at 16. Thus, Petitioner argues that Kobayashi is underpowered due to the
`use of lean mixture, and that one of ordinary skill in the art would have been
`motivated to increase the DI fuel to generate more power, i.e. to provide a
`substantive contribution to torque, and to modify the air-fuel ratio to be
`stoichiometric. Cf. id. (“Yuushiro augments and improves the system of
`Kobayashi in that it supports a higher fuel to air ratio in the cylinder and
`allows for the amount of DI fuel to be increased as load is increased.”).
`
`In opposition, Patent Owner, focusing on the sharp differences
`between the references’ teachings, argues that a person of ordinary skill in
`the art would not have been motivated to modify Kobayashi in the manner
`
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`proposed by Petitioner. See PO Resp. 31–37. Patent Owner argues, for
`example, that,
`if Kobayashi’s engine is operated, as Petitioner suggests, with
`additional directly injected fuel at high loads (from Yuushiro) it
`would . . . eliminate the lean burn operating principles that are
`fundamental to Kobayashi and necessary for its stated objective
`of using lean air fuel mixtures to significantly reduce the
`emission of the air pollutants from the engine.
`Id. at 36 (citations omitted).
`
`We find Petitioner’s reasoning lacks an adequate explanation that
`connects the contention that Kobayashi has limited power with the critical
`contention that one would have looked to and applied another reference that
`teaches, as discussed below, increasing power via the use of a different air-
`fuel ratio and a different use of the DI fuel. Cf. PO Resp. 35 (Patent Owner
`arguing that Petitioner is incorrect in asserting that one would turn to
`Yuushiro’s fuel map because Kobayashi’s engine operation is too lean.).
`The Petition does not, for example, contain an explicit assertion that a
`person of ordinary skill in the art would view Kobayashi’s level of power
`production to be a problem in need of a solution. See Pet. 15. Similarly,
`Dr. Clark’s cited testimony, jumps from the assertion that Kobayashi has a
`limit on its power to the assertion that “[a]s a result, the person of ordinary
`skill in the art would have looked to known techniques to increase the power
`output of the engine.” Ex. 1003 ¶ 160 (emphasis added). Dr. Clark does not
`elaborate on the assertion that a limit on power results, as implied, in one
`desiring to greatly increase the power output of Kobayashi’s engine. See id.
`¶¶ 160–161. Because of this lack in further support for this testimony, we
`give Dr. Clark’s opinion on this point little weight. See 37 C.F.R. 42.65(a)
`
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`(“Expert testimony that does not disclose the underlying facts or data on
`which the opinion is based is entitled to little or no weight.”).
`
`Kobayashi’s engine utilizes an atypical combustion process and
`reflects a carefully balanced design having the advantages of high fuel
`efficiency, reduced emissions, and avoidance of knock. See Ex. 1005, 1:13–
`16, 11:53–64 (“[T]he engine adopting the premix compression ignition
`combustion system has the advantages of the less emission of the air
`pollutants and the less fuel consumption.”). Kobayashi explains the problem
`addressed as follows.
`
`For protection of the global environment, reducing the
`emission of air pollutants from the internal combustion engine
`is highly demanded. Another strong demand is further
`reduction of the fuel consumption, in order to lower the
`emission of carbon dioxide as a cause of global warming and
`reduce the driving cost of the internal combustion engine.
`Id. at 1:27–32. Kobayashi addresses these concerns by using a compression
`ignited port injected fuel (e.g., gasoline) and air mixture containing an
`excess amount of air beyond that necessary to support combustion, i.e. a lean
`fuel mixture. See, e.g., id. at 23:5–9. Kobayashi explains that such a
`mixture avoids knock but does not self-ignite via compression when the
`engine is operated at high loads. See id. at 18:1–9. Kobayashi, therefore, at
`high loads, directly injects a relatively small amount of hydrogen or other
`high octane value fuel, the spark ignition of which creates a pressure spike in
`the cylinder thereby compressing and igniting the PI fuel mixture. Id.
`at 18:9–14, 32–34 (“The engine 10 of the embodiment ignites the
`hydrogen-air mixture to trigger auto ignition of the gasoline-air mixture
`under the high loading conditions.”); 20:15–32 (explaining that only a small
`quantity of hydrogen or the like is required). Thus, Kobayashi utilizes two
`
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`air-fuel mixtures and two successive combustions, with the latter producing
`the power to drive the engine. See id. at 2:35–65; Tr.
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