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 CO.,
`Petitioner,
`v.
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`
`IPR2019-01402
`Patent 10,138,826 B2
`
`
`Before KEN B. BARRETT, LYNNE H. BROWNE, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, 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 CO.,
`Petitioner,
`v.
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`
`IPR2019-01402
`Patent 10,138,826 B2
`
`
`Before KEN B. BARRETT, LYNNE H. BROWNE, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, 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
`
`
`
`
`
`
`
`IPR2019-01402
`Patent 10,138,826 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Petitioner, Ford Motor Company, filed a Petition (“Pet.”) requesting
`inter partes review of claims 1–8, 10–24, 26, 27, and 31–33 (the
`“Challenged Claims”) of U.S. Patent No. 10,138,826 B2 (Ex. 1001, the
`“’826 patent”). Paper 2. We instituted trial on all Challenged Claims and
`grounds. Paper 10.
`Patent Owner filed a Patent Owner Response. Paper 18 (“PO Resp.”).
`Petitioner filed a Reply to the Patent Owner Response. Paper 22 (“Reply”).
`Patent Owner filed a Sur-reply to the Reply. Paper 28 (Sur-reply”).
`We conducted a consolidated oral hearing on November 19, 2020, for
`this proceeding, IPR2019-01399, and IPR2019-01401 and the record
`includes a copy of the transcript of that hearing. Paper 36 (“Tr.”).
`Patent Owner moves to exclude certain evidence. Paper 29.
`Petitioner opposes that motion (Paper 30) and Patent Owner replies to the
`opposition (Paper 33).
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we conclude that Petitioner demonstrates, by a
`preponderance of the evidence, that the Challenged Claims are unpatentable.
`B. Real Parties in Interest
`Petitioner identifies itself as the sole real party-in-interest. Pet. 78.
`Patent Owner identifies itself and Ethanol Boosting Systems, LLC, the
`exclusive licensee of the ’826 patent, as real parties-in-interest. Paper 6, 2.
`C. Related Matters
`Petitioner and Patent Owner indicate that the ’826 patent is the subject
`of litigation in the U.S. District Court for the District of Delaware in a case
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`IPR2019-01402
`Patent 10,138,826 B2
`styled Ethanol Boosting Systems, LLC v. Ford Motor Company, LLC, No.
`1:19-cv-00196-CFC (D. Del.). Pet. 78; Paper 6, 2. Patent Owner appealed
`the claim constructions in this litigation to the Federal Circuit. PO Resp. 30;
`see also Ex. 1041 (providing the District Court’s claim construction order).
`The Federal Circuit affirmed the constructions. Ex. 1052 (providing the
`Federal Circuit’s Rule 36 affirmance).
`Patent Owner indicates that litigation in the U.S. District Court for the
`District of Delaware in a case styled Ethanol Boosting Systems, LLC v. Ford
`Motor Company, LLC, No. 1:20-cv-00706-CFC (D. Del.) relates to the ’826
`patent. Paper 24, 2.
`Petitioner also filed, concurrent with the filing of the Petition,
`petitions for inter partes review of three related patents, in cases numbered
`IPR2019-01399 (challenging US 9,810,166), IPR2019-01400 (challenging
`US 8,069,839), and IPR2019-01401 (challenging US 9,255,519). Pet. 78;
`Paper 6, 2. Patent Owner also identifies IPR2020-00012, which also
`challenges the ’826 patent. Paper 6, 2.
`The parties indicate that the ’826 patent is related to the following
`additional patents and pending patent applications: US 10,344,689; US
`10,221,783; US 9,708,965; US 9,695,784; US 9,255,519; US 8,857,410; US
`8,733,321; US 8,707,913; US 8,522,746; US 8,468,983; US 8,353,269; US
`8,302,580; US 8,276,565; US 8,171,915; US 8,146,568; US 7,971,572; US
`7,841,325; US 7,762,233; US 7,740,004; US 7,640,915; US 7,444,987; US
`7,314,033; US 7,225,787; US App. 16/251,658; US App. 16/424,471. Pet.
`70–71; Paper 5, 2–5.
`D. The ’862 Patent
`The ’826 patent, titled “Fuel Management System for Variable
`Ethanol Octane Enhancement of Gasoline Engines,” issued November 27,
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`IPR2019-01402
`Patent 10,138,826 B2
`2018, from an application filed September 27, 2017, and ultimately claims
`priority to an application filed November 18, 2004. Ex. 1001, codes (54),
`(45), (22), (63). The ’826 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 1:38–41. We reproduce Figure 1 from the ’826 patent below.
`
`
`Figure 1 depicts “a block diagram of one embodiment of the invention
`disclosed” in the ’826 patent. Ex. 1001, 3:7–8. Spark ignition gasoline
`engine 10 includes knock sensor 12, fuel management microprocessor
`system 14, engine manifold 20, and turbocharger 22. Id. at 3:24–32.
`Ethanol tank 16 contains an anti-knock agent, such as ethanol, and gasoline
`tank 18 contains the primary fuel, such as gasoline. Id. at 3:26–31. 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
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`IPR2019-01402
`Patent 10,138,826 B2
`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 3:32–38. The fuel
`management system minimizes the amount of ethanol directly injected into
`the cylinder while still preventing engine knock. Id. at 3:38–40.
`“Direct injection [into the cylinder] 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.” Ex. 1001, 3:44–52. The amount of octane
`enhancement needed from the ethanol to prevent knocking is a function of
`the torque level. Id. at 6:6–10. “[P]ort 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 3:53–57.
`E. Illustrative Claims
`Of the Challenged Claims, claims 1, 12, 21, and 31 are independent
`claims. Claim 1, reproduced below, is representative.
`1. A fuel management system for a spark ignition engine
`that has
`a first fueling system that uses direct injection and also has
`a second fueling system that uses port fuel injection; and
`where the fueling is such that there is a first torque range
`where both the first and second fueling system are used
`throughout the range; and
`where the fraction of fueling provided by the first fueling
`system is higher at the highest value of torque in the first torque
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`IPR2019-01402
`Patent 10,138,826 B2
`range than in the lowest value of torque in the first torque range;
`and
`
`35 U.S.C. §
`103(a)1
`
`References/Basis
`Kobayashi,2 Yuushiro3
`
`where there is a second torque range where only the
`second fueling system is used;
`where when the torque is higher than the highest value of
`torque in the second torque range the engine is operated in the
`first torque range; and
`where the second torque range extends from zero torque
`to the highest torque in the second torque range.
`Ex. 1001, 7:39–55.
`F. Prior Art and Asserted Grounds
`Petitioner asserts that the Challenged Claims are unpatentable on the
`following grounds:
`Claims Challenged
`1–8, 10–13, and 21–
`24
`1–8, 10–24, 26, 27,
`and 31–33
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the application from which the ’826 patent ultimately claims
`benefit was filed before this date, and Petitioner does not provide persuasive
`arguments or evidence to support a later filing date, the pre-AIA version of
`§ 103 applies. See Ex. 1001, code (63), 1:5–27; Pet. 3 (disputing the priority
`date but offering no evidence or analysis to support the contention).
`2 Kobayashi, US 7,188,607 B2, issued Mar. 13, 2007, from an application
`filed June 27, 2003 (Ex. 1005).
`3 Yuushiro, JP Unexamined Pat. App. Pub. H10-252512, published Sept. 22,
`1998 (Ex. 1006). Exhibit 1006 includes a Japanese version of the reference,
`an English translation of the reference, and a certification of the translation.
`4 Rubbert, DE 198 53 799 A1, published May 25, 2000 (Ex. 1007).
`Exhibit 1007 includes a German version of the reference, an English
`translation of the reference, and a certification of the translation.
`5 Bosch, Automotive Handbook (3d ed. 1993) (Ex. 1031). Exhibit 1031
`includes excerpts from the handbook.
`
`103(a)
`
`Rubbert,4 Yuushiro, Bosch5
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`6
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`
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`35 U.S.C. §
`103(a)
`
`References/Basis
`Kinjiro,6 Bosch
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`IPR2019-01402
`Patent 10,138,826 B2
`Claims Challenged
`1–8, 10–24, 26, 27,
`and 31–33
`The following subsections provide a brief description of the asserted
`prior art references.
`1. Kobayashi
`Kobayashi, titled “Internal Combustion Engine of Compressing and
`Auto-Ignition Air-Fuel Mixture and Method of Controlling Such Internal
`Combustion Engine,” issued March 13, 2007, from an application filed June
`27, 2003. Ex. 1005, codes (54), (45), (22). 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.” Id. at 1:13–16. We reproduce Petitioner’s
`annotated version of Kobayashi’s Figure 1, below.
`
`
`6 Kinjiro, JP Unexamined Pat. App. Pub. 2002-227697, published Aug. 14,
`2002 (Ex. 1008). Exhibit 1008 includes a Japanese version of the reference,
`an English translation of the reference, and a certification of the translation.
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`Patent 10,138,826 B2
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`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 fuel injection of
`gasoline (with the injector in red) and direct fuel injection of 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. Ex. 1005, 10:16–17, 27–29.
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`IPR2019-01402
`Patent 10,138,826 B2
`ECU 30 also detects engine knocking using knocking sensor 25. Id. at
`10:34–36. 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. The hydrogen is ignited by spark plug 136.
`Id. at 13:50–56. “Ignition of the hydrogen-air mixture with a spark . . . leads
`to quick combustion of the hydrogen-air mixture to raise the internal
`pressure of the combustion chamber. The gasoline-air mixture formed in the
`combustion chamber is accordingly compressed and auto-ignited to start
`combustion substantially all at once.” Id. at 16:20–26.
`2. Yuushiro
`Yuushiro, titled “Compression Ignition Type Internal Combustion
`Engine,” published September 22, 1998. Ex. 1006, codes (54), (43).
`Yuushiro “relates to a compression ignition type internal combustion engine
`that compresses premixed gas at high pressure, and causes compression
`ignition.” Id. ¶ 1. We reproduce Petitioner’s annotated version of
`Yuushiro’s Figure 1, below.
`
`
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`9
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`IPR2019-01402
`Patent 10,138,826 B2
`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,7 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.
`We reproduce Yuushiro’s Figure 3 below.
`
`
`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
`
`
`7 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.
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`10
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`IPR2019-01402
`Patent 10,138,826 B2
`(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 (describing
`operations in the light load zone), ¶¶ 51–58 (describing operations in the
`high load zone).
`3. Rubbert
`Rubbert, titled “Method for Mixture Formation in a Mixture-
`Compressing External-Ignition Internal Combustion Engine with Fuel
`Injection,” published on May 25, 2000. Ex. 1007, codes (54), (43). Rubbert
`discloses a combination of induction pipe injection (that is, port injection)
`and direct injection of fuel. Id. at code (57). Rubbert describes that
`in the idling and partial load ranges, the greater portion of fuel
`in the mixture is injected by induction pipe injection than by
`direct injection. The directly injected fuel in this load range
`results in an ignitable mixture near the spark plug and allows
`reliable ignition of the lean mixture in the entire combustion
`chamber.
`In contrast, the fuel portion in the mixture can be mostly
`or completely injected by direct injection in the full-load range
`of the internal combustion engine, which means that the
`advantages of direct injection with respect to cylinder filling
`and knock limit can be fully utilized.
`Id. at 2, col. 1–col. 2.
`
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`IPR2019-01402
`Patent 10,138,826 B2
`4. Bosch
`Bosch, which Petitioner contends was published in 1993, is titled
`“Automotive Handbook.” Ex. 1031, 1–38; Pet. 9. As seen in its table of
`contents, the Handbook covers a wide array of subjects directed to
`automotive engineering. See id. at 4–5. Exhibit 1031 includes excerpts
`from the handbook, covering sensors (pp. 6–12), mathematics (pp. 13–16),
`quality (pp. 17–19), engineering statistics (pp. 20–23), reliability (pg. 24),
`data processing in motor vehicles (pp. 25–26), control engineering (pp. 27–
`28), internal-combustion engines (pp. 29–58), engine cooling (pp. 59–60),
`air filters (pg. 61), charging systems (pp. 62–64), exhaust systems (pp. 65–
`66), engine management (pp. 67–91), and exhaust emissions (pp. 92–97).
`5. Kinjiro
`Kinjiro, titled “Fuel Injection Apparatus for Internal Combustion
`Engine,” published August 14, 2002. Ex. 1008, codes (54), (43). Kinjiro
`relates to a fuel injection apparatus where, “if knocking is detected by a
`knock detection means, fuel is injected from both fuel injection valves in a
`first fuel injection valve provided in an intake passage and a second fuel
`injection valve for injecting fuel directly into a combustion chamber.” Id.
`¶ 7. We reproduce Kinjiro’s Figure 1 below.
`
`
`8 Here, we use the pagination supplied by Petitioner for Exhibit 1031.
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`Figure 1 illustrates the main structures of Kinjiro’s fuel injection apparatus.
`Ex. 1008, 8 (“Brief Description of the Drawings”). Kinjiro’s engine 1, a
`spark-ignition engine, includes cylinder 1A, piston 1B, intake passage 2, and
`spark plug 3. Id. ¶ 10. The engine also includes injector 5, located in intake
`passage 2, and injector 6, located in cylinder 1A. Id. ¶¶ 11–13, Fig. 1.
`Engine 1 also includes knock sensor 7 and electronic control unit 10. Id.
`¶¶ 12–13.
`Kinjiro discloses that its engine operates in two states—a “normal
`operating state,” where knocking is not occurring, and a “specified operating
`state,” which is entered when knocking occurs. Ex. 1008 ¶¶ 13, 14. During
`the normal operating state, fuel is injected using injector 5 only and during
`the specified operating state, fuel is injected using both injectors 5 and 6
`(referred to as “split injection mode”). Id. ECU 10 initiates the specified
`operating state when knock sensor 7 indicates that engine knocking is
`occurring. Id. ¶¶ 13, 20.
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`Patent 10,138,826 B2
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`
`II. ANALYSIS
`
`A. Applicable Law
`In inter partes reviews, a petitioner bears the burden of proving
`unpatentability of the challenged claims, and the burden of persuasion never
`shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding,
`Petitioner must support its challenge by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Accordingly, all of our findings
`and conclusions are based on a preponderance of the evidence.
`Petitioner’s three asserted grounds of unpatentability are each based
`on obviousness under 35 U.S.C. § 103(a).
`Section 103(a) [of 35 U.S.C.] forbids issuance of a patent when
`“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 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 ordinary
`skill in the art;9 and (4) when available, objective evidence, such as
`commercial success, long felt but unsolved needs, and failure of others.10
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`
`9 We address the level of ordinary skill in the art in Section II.B., below.
`10 Neither party has identified objective evidence in the record for us to
`consider.
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`“[O]bviousness must be determined in light of all the facts, and . . . a
`given course of action often has simultaneous advantages and disadvantages,
`and this does not necessarily obviate motivation to combine” teachings from
`multiple references. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
`(Fed. Cir. 2006) (emphasis added); see also PAR Pharm., Inc. v. TWI
`Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or
`absence of a motivation to combine references in an obviousness
`determination is a pure question of fact.”).
`B. Level of Ordinary Skill in the Art
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having
`ordinary skill in the art at the time of the invention “would . . . 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 control.” Pet. 8 (referencing
`Ex. 1003 ¶ 10 (providing Dr. Clark’s testimony regarding the level of
`ordinary skill in the art)). Petitioner contends that additional experience
`could compensate for a different type of education. Id. at 8–9. Petitioner
`further contends that additional experience could substitute for some
`education and that additional education may substitute for some experience.
`Id. at 9.
`Patent Owner does not dispute this characterization of the level of
`ordinary skill in the art. Patent Owner’s declarant states that “[t]he 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.”
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`Ex. 2002 ¶ 40. Mr. Hannemann adds that “[i]ndividuals 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.” Id.
`We find that Mr. Hannemann’s definition of the level of ordinary skill
`in the art is substantially the same as Petitioner’s characterization. We
`accept 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 ’826 patent
`and the prior art of record. For example, the background section of the ’826
`patent discusses things that are “known” in the relevant art and supports our
`finding that the artisan of ordinary skill would have an engineering degree
`and experience with internal combustion engines. See Ex. 1001, 1:38–2:21.
`Similarly, the prior art includes teachings directed to internal combustion
`engine design. See, e.g., Ex. 1005, 1:10–2:19 (discussing the field of
`invention and background for Kobayashi); Ex. 1006 ¶¶ 1–7 (describing the
`field of invention, prior art, and problem addressed in Yuushiro); Ex. 1007,
`2 (discussing fuel mixing for an internal combustion engine in Rubbert);
`Ex. 1008 ¶¶ 1–7 (describing the field of invention, prior art, and problem
`addressed in Kinjiro); Ex. 1031 (providing an “Automotive Handbook”).
`C. Claim Construction
`In inter partes reviews, we interpret a claim “using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b)(2019). Under
`this standard, we construe the claim “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id. Only claim
`terms that are in controversy need to be construed and only to the extent
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`necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`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. 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 ’826 patent and
`Patent Owner appealed the constructions to the Federal Circuit. Reply 9, PO
`Resp. 30. The Federal Circuit affirmed the constructions. Ex. 1052
`(providing the Federal Circuit’s Rule 36 affirmance); see generally
`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”).
`
`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. See Nidec Motor Corp., 868 F.3d at 1017.
`D. Ground 1: Claims 1–8, 10–13, and 21–24 as Allegedly Obvious
`Over Kobayashi and Yuushiro
`Petitioner contends that the combination of Kobayashi and Yuushiro
`renders claims 1–8, 10–13, and 21–24 obvious. Pet. 1, 11–34.
`
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`Patent 10,138,826 B2
`1. Independent claim 1
`a) Reasons to combine Kobayashi and Yuushiro
`Independent claim 1 recites, in relevant part, “a first fueling system
`that uses direct injection and also has a second fueling system that uses port
`fuel injection” and “where the fraction of fueling provided by the first
`fueling system is higher at the highest value of torque in the first torque
`range than in the lowest value of torque in the first torque range.” Ex. 1001,
`7:40–41, 7:45–48. Petitioner contends that “Kobayashi discloses an engine
`. . . that uses both [port injection] and [direct injection] where the fuel
`quantity injected via the [disclosed] injection mechanisms is determined
`based on a fuel map.” Pet. 11 (referencing Ex. 1005, 9:44–47, 12:14–21;
`Ex. 1003 ¶ 1504–157). Petitioner further asserts that “Kobayashi discloses
`reliance on [port injection] fuel in both low and high loading conditions . . .
`[and uses] a second, spark-ignited [direct injection] fuel in high loading
`conditions to ignite the [port injection] fuel and avoid knocking.” Id. at 12
`(referencing Ex. 1005, 9:44–50, 12:7–12, 15:65–16:27; Ex. 1003 ¶ 156).
`Petitioner contends that Yuushiro discloses a fuel map where only
`port injection fuel is used at a light load and both direct injection fuel and
`port injection fuel are used at a higher load. Pet. 13. Petitioner contends
`that “Yuushiro discloses that as load increases in the reference load zone, the
`quantity of [direct injection] fuel [Qd] likewise increases.” Id. at 22
`(referencing Ex. 1006 ¶ 52, Fig. 3; Ex. 1003 ¶ 188).
`Petitioner’s proposed modification is to apply the teachings of
`Yuushiro’s fuel map to Koboyashi. See, e.g., Reply 10 (“A [person having
`ordinary skill in the art] would have therefore recognized Yuushiro’s [direct
`injection] strategy would be applied to extend Kobayashi’s [direct injection]
`fuel quantity.”); Tr. 23:12–14 (“[T]he proposal that’s been advanced is that
`
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`Patent 10,138,826 B2
`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 contends that it would have been obvious to improve
`Kobayashi’s fuel map to include an increase in the direct injection fuel, and
`that Yuushiro discloses such a map. Pet. 12. Petitioner contends that
`Yuushiro “discloses [direct injection] 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 it allows for the amount of [direct injection] fuel to also
`be increased as load is increased.” Id. at 15 (referencing Ex. 1003 ¶ 166).
`We first consider Petitioner’s primary assertion of a motivation, which
`is as follows.
`A [person of ordinary skill in the art] would have
`understood that by relying on a lean air/fuel mixture, Kobayashi
`has a limit to its engine power output. The [person of ordinary
`skill in the art] 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.
`Pet. 14 (referencing Ex. 1003 ¶¶ 163–165) (emphasis added). Petitioner
`contends that a person having ordinary skill in the art would have modified
`Kobayashi in accordance with Yuushiro’s teaching of the use of more direct
`injection fuel to provide “a substantive contribution to engine torque under
`high loading conditions.” Id. at 15. Petitioner contends that Kobayashi is
`underpowered due to the use of a lean mixture, and that one of ordinary skill
`in the art would have been motivated to increase the direct injection 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’s
`reliance on substantive contribution of [direct injection] fuel to the output
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`Patent 10,138,826 B2
`torque . . . augments and improves the system of Kobayashi in that it
`supports a higher fuel to air ratio in the cylinder and it allows for the amount
`of [direct injection] fuel to also be increased as load is increased.”).
`In response, 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
`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.
`PO Resp. 35–36 (citations omitted).
`Petitioner replies that a person having ordinary skill in the art “would
`have therefore recognized Yuushiro’s [direct injection] strategy would be
`applied to extend Kobayashi’s [direct injection] fuel quantity.” Reply 10
`(referencing Ex. 1003 ¶ 169). Petitioner argues that Patent Owner’s
`assertions about the differences between Kobayashi and Yuushiro ignores
`the proposed modification, that would use Yuushiro’s fuel map in
`Kobayashi’s engine. Id. at 11. In sur-reply, Patent Owner argues that
`“Kobayashi’s operation under high loading conditions is completely
`incompatible with Yuushiro, because Yuushiro’s operating principle
`requires mixing of additional directly injected fuel with port injected fuel in
`the heavy load regime in order to increase the amount of fuel available to the
`engine at high loads” and for “high loading conditions,” Kobayashi
`“operat[es] with a ‘large value to the excess air ratio.’” Sur-reply 13.
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`We find Petitioner’s reasoning lacks an adequate explanation that
`connects the contention that Kobayashi has limited power with the critical
`contention that one of ordinary skill in the art would have looked to and
`applied another reference that teaches, as discussed below, increasing power
`by using a different air-fuel ratio and a different use of the direct injection
`fuel. Cf. PO Resp. 35 (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. 14. Similarly, Dr. Clark’s cited testimony jumps from asserting that
`Kobayashi’s lean mixture has a negative impact on its power to asserting
`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
`¶ 163. Dr. Clark does not provide a basis for his testimony that Kobayashi
`has limited power nor does he elaborate on the assertion that if a limit on
`power results, as implied, then one would desire to greatly increase the
`power output of Kobayashi’s engine. See id. ¶¶ 163–164. Because of this
`lack in further su
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